Next ‘Fireside Chat’ on Wed, 29 June 2022, 12:15 CEST on LinkedIn

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LinkedIn

It’s already close to the end of the month again, i.e. the next ‘Fireside Chat’ is upcoming. It will be the 15th edition, and it will be on LinkedIn for the second time. The switch from Clubhouse to LinkedIn Live worked smoothly — at least for me; I do hope, for you, too! If you missed it: The recordings of #14 are still available here.

The next ‘Fireside Chat’ is planned as follows:

Date: Wed, 29 June 2022
Time: 12:15 hrs CEST
Venue: LinkedIn; see you here

My current draft list of topics is as follows:

👉 S2022_002
Novartis ./. Mepha Pharma
Order of 2 June 2022: ‘Fingolimod 0.5 mg’
👉 O2020_004 (the aftermath)
yodoba AG ./. Swisscom (Schweiz) AG
Rumour has it …
👉 INGRES
Some take-aways from the GA of 23 June 2022

/MW

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Recordings available: Swiss Patent Litigation // 🔥 Fireside Chat #14

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Just in case you missed it: The LinkedIn Live session is still available online.

For the podcast lovers out there, this is an audio-only recording of the LinkedIn Live session of 1 June 2022:

The following topics are covered:

👉 S2022_001
Pelliheat AG ./. Hans SCHÄREN
Judgment of 2 March 2022: ‘Register ban’

👉 O2020_004
yodoba AG ./. Swisscom (Schweiz) AG
Judgment of 22 March 2022: ‘Swisscom TV 2.0’

👉 S2021_006
Bayer HealthCare LLC ./. Helvepharm AG
Judgment of 26 April 2022: ‘Sorafenib tosylate’

👉 The FPC’s 10th Anniversary
Symposium of 6 May 2022: A quick recap

👉 Art. 84 EPC
Claims shall «be supported by the description» …

/MW

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Next ‘Fireside Chat’ on Wed, 1 June 2022, 12:15 CEST on LinkedIn

Reading time: 2 minutes
LinkedIn

I was re-thinking the Fireside Chat format a while ago, and I have been curious to learn how you would like it. The outcome of my little poll showed a clear tendency: A preference for lunch time over the evening; and a preference for LinkedIn Live over Clubhouse.

Accordingly, the next Fireside Chat is planned as follows:

Date: Wed, 1 June 2022
Time: 12:15 hrs CEST
Venue: LinkedIn; see you here

I hope the start time leaves you enough time to grab a sandwich before joining … 😉

My current draft list of topics is as follows:

👉 S2022_001
Pelliheat AG ./. Hans SCHÄREN
Judgment of 2 March 2022: ‘Register ban’
👉 O2020_004
yodoba AG ./. Swisscom (Schweiz) AG
Judgment of 22 March 2022: ‘Swisscom TV 2.0’
👉 S2021_006
Bayer HealthCare LLC ./. Helvepharm AG
Judgment of 26 April 2022: ‘Sorafenib tosylate’
👉 The FPC’s 10th Anniversary
Symposium of 6 May 2022: A quick recap
👉 Art. 84 EPC
Claims shall «be supported by the description» …
Missed the Live session? Here is the recording.

/MW

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For discussion: Has the requirement that claims be «supported by the description» been perverted over time?

Reading time: 13 minutes

Objections with respect to alleged violations of Art. 84 EPC have become more and more cumbersome in recent times. I cannot really tell why. The law has not changed ever since enactment of the EPC 1973 in this respect. But the EPO Guidelines were tightened substantially, purportedly merely reflecting long-standing practice. My experience is different. Back in the days, I had only been required to make features of independent claims also mandatory in the specification. A no-brainer that did no harm, so I complied. Nowadays, practitioners are regularly facing extensive objections to tidy up the specification to large extent, causing anything but minimally invasive changes.

The 2021 revision of the Guidelines caused an outcry amongst users, and the EPO made certain minor amendments in the next revision cycle of the Guidelines (see e.g. here). The most controversially discussed sections of the Guidelines are F-IV, 4.3 (inconsistencies), F-IV, 4.4 (claim-like clauses); don’t miss to tick the ‘show modifications’ checkbox on the right side.

However, the more general question is still unresolved:

Why the heck do we have to adapt the specification at all?

In my view, there is just no sound legal basis for it. I am fully aware that this position is controversial, running against the gist of some rather old decisions of Boards of Appeal of the EPO. My line of thinking is as follows. As always, I stand to be proven wrong. 

Article 84 at a glance

The mere wording of Art. 84 EPC is plain and simple (emphasis added):

Art. 84 — Claims
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

The second sentence of Art. 84 EPC requires the claims to be

    1. clear;
    2. concise; and
    3. supported by the description.
the travaux préparatoires

It is evident from the TP that the first two criteria, i.e. clarity and conciseness were meant to reflect Art. 6 PCT in the new legal framework of the EPC:

The same holds true for the «support by the description» requirement, with an initially pretty different (but much clearer) wording:  

No patent claim shall contain subject matter that is not listed in the description.

The TP are silent about the reasons why the initially very clear wording of the third criterion had not been further pursued but rather been amended to exactly match Art. 6 PCT. In my view, the most likely reason is an attempt of harmonization of the wording. There is nothing in the TP that could suggest an intent of the legislator to change the substance of the initial draft, i.e. that the third criterion was simply meant to exclude subject-matter from the claims that is not listed in the description.

In the first place, all requirements of this provision had been included in the draft Implementing Regulations. Later, the sub-committee proposed to adopt the exact same wording of Art. 6 PCT, and to move it to the Convention itself:

In the first place, the draft article read as follows (exactly as Art. 6 PCT):

However, the Conference did not like the wording «fully supported by the description» and asked the Working Party to examine deletion of «fully» and the replacement by a less restrictive wording:

And, indeed, the term «fully» was deleted:

Even though the term «fully» was not replaced by a less restrictive wording, the TP leave no doubt about the legislator’s intent to prevent the third criterion from being interpreteded in the sense of the initial draft, i.e. that the claims shall be «fully supported by the description».

This is how we ended up with the wording of Art. 71a at the Conference:

Here is the final wording of the article, which has never been changed ever since:

For sake of completeness, I have reviewed the records of the Washington Conference on the PCT — which do not provide any further insight.

T 1989/18 — 3.3.04: Shaking the current practice to the very foundations

Applicants rarely risk a refusal merely for non-compliance with a formalistic objection concerning the «necessary» adaptation of the description once allowability of a set of claims has been indicated by the ED. Not so in the case underlying T 1989/18 — 3.3.04 (EP 2 794 651; DREX and file wrapper). Accordingly, the Board of Appeal had to investigate whether there was any legal basis for demanding an adaptation of the specification at all.

The Board took an approach similar to what I take from the TP, i.e. the «supported by the description» simply means:

[T]he subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described.

This must not be confused with the first requirement of clarity, in this Board’s view:

When assessing clarity, the description cannot be relied upon to resolve a clarity issue in a claim, nor can it give rise to any such isseue if the definition of the subject-matter in a claim is clear per se.

Accordingly, it is held (¶7):

Article 84 EPC cannot serve as a legal basis for the refusal.

The Board did not find any legal basis in R. 42(1) lit. c EPC (in the absence of a non-unity objection; ¶8) and R. 48(1) lit. c EPC (only pertaining to patent applications, not patents — opposed to R. 42 EPC; ¶9-12), either.

Accordingly, the Board allowed the appeal and remitted the case to the ED with an order to grant the patent — with an unamended description.

the aftermath of T 1989/18 — 3.3.04

To the best of my knowledge, one further Board of Appeal has explicitly adopted the approach of T 1989/18 — 3.3.04, i.e. in the matter T 1444/20 — 3.3.01 (¶2 et seqq.).

On the other hand, I am aware of four recent Board of Appeal decisions that dissent with T 1989/18 — 3.3.04. I will address them below.

T 1024/18 — 3.2.06

Decision T 1024/18 — 3.2.06 concurs with T 1989/18 — 3.3.04 in that the claims must be clear in themselves; criterion i) of Art. 84 EPC. However, with respect to the third criterion, this Board holds that «supported by the description» cannot mean support in only a part of the description, because this would be at odds with the wording «supported by the description» (apparently understood with an emphasis on the word ‘the’).

This is a somewhat circular reasoning, isn’t it? The claims are only supported by the description when they are supported throughout the description; otherwise, they are not supported(?).

What is more, the TP are clear in that a less restrictive understanding than «fully» supported by the description was intended by the legislator. Against this background, I am having a hard time to accept a reasoning according to which support by (only) «part» of the description is not sufficient (¶3.1.8). 

Further, the Board mentions that the provision (Art. 84) had been moved from the Implementing Regulations to the Convention itself, because of its importance for national infringement procedings; ¶3.1.9. The Board draws from this that also the requirement of «supported by the description» serves this purpose.

I cannot deduce this from the TP; see above. The TP refer to the importance of the provision, but they are silent about which criteria thereof were considered to be of so much importance for national infringement proceedings. In my view, there is no reason to assume all three criteria were equally meant. For instance, I fail to see that the legislator had conciseness of the claims in mind with respect to the outstanding importance in infringement litigation. In my experience, conciseness of a claim is no issue at all. So, why would one assume that «supported by the description» was meant to be of oustanding importance?

T 2293/18 — 3.5.02

This decision holds, with reference to T 409/91 (¶3.3-3.5), that «supported by the description» requires that the claimed subject-matter has a basis in the description, which is to make sure that the claims only extend to subject-matter which, after reading the description, are at the disposal of the skilled person; ¶3.3.5.

Further, with reference to T 659/93 (¶3.4), this decision holds that «supported by the description» is to assure that the scope corresponds with the actual contribution to the art, and that the claims can be worked over the entire scope; ¶3.3.5. .

All this is not really controversial. But does it help to answer the question?

The decision goes on to hold that «it follows» that claims and description must not contradict each other, as part of a single document:

I wonder: Why is this a necessary consequence? I feel that the claims may well be workable over their entire scope, and they may well correspond to the actual contribution to the art, without the need to perfectly match with the description («übereinstimmen»). In any event, I feel requiring a perfect match puts the bar at the wrong level: «Full» support was clearly not intended by the legislator.

T 0121/20 — 3.2.01

This decision concurs with the reasons of T 1024/18 — 3.2.06 (which I do not find very convincing; see above), without adding anything in substance; ¶10.2.

UPDATE 11 June 2022: Yet another decision of the same Board 3.2.01 has been published on 9 June 2022, i.e. T 1516/20. This decision, again, merely refers to and consents with T 1024/18 — 3.2.06, but does not add anything in substance; ¶5.

T 2766/17 — 3.2.02

This decision agrees with T 1989/18 in that the description cannot be relied upon to resolve a clarity issue in the claim, but it does not follow the a contrario reasoning:

The decision illustrates the unitary character of a patent with the example that terms may be given a special meaning in the description, i.e. that a patent specification can become its own dictionary. In conclusion, this decision holds that statements in the description contradicting the plain claim wording may cause doubts as to the intended meaning of this wording:

I am not convinced. Primacy of the claims is the overriding principle of any claim construction. If parts of the description really contradict the plain wording of the claim, I fail to see the clarity issue. These parts are irrelevant and can simply be ignored.

Practice under the PCT

The PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/11) are meant to reflect the practice under Art. 6 PCT, i.e. under the more restrictive wording «fully supported by the description». The following is noted therein:

Notably, not each and every inconsistency has to be removed even under Art. 6 PCT:

However, inconsistencies which do not cause doubt as to the meaning of the claims may be overlooked.

I feel the above examle in the PCT Guidelines is telling — because it illustrates how this practice will inevitably lead to undesired results. I cannot see how a semiconductor in one «embodiment» of the description could cause doubt as to the meaning of the plain wording «electronic tube» in a claim. A tube is a tube, not a semiconductor. Period. The disclosed (non-)embodiment is simply not literally covered by the claimed invention — and we all know what that means for a patentee when trying to assert infringement under the DoE. On the other hand, if this (non-)embodiment is deleted before grant in order to meet the «supported by the description» requirement, a semiconductor may easily be asserted as infringement under the DoE. The result is the exact opposite of legal certainty and serves no public interest at all.

Comparative study of national practices

WIPO has conducted a comparative study on  the relationship of the claims and the disclosure back in 2002; SCP/7/6.

The practice of the EPO is extensively reviewed, and summarized as follows:

No mentioning of amendments to the description at all. Essential features must be taken up in the claims, but that’s it. The same holds true for the other jurisdictions assessed.

In any event, no national practice in a major jurisdiction that I am aware of requires applicants to adapt the description, and in particular not in the way the EPO does. Against this background, I feel that it is somewhat far-fetched to assume that the PCT contracting states really intended to require substantial amendments to the description by way of Art. 6 PCT (and even less so under the less restrictive wording of Art. 84 EPC).

Yet another WIPO document gets it right, in my view. SCP/22/4 holds:

I would just leave it at this. No touching of the description is necessary towards this end.

Where are we going from here

Within a time frame of only a few months, we have seen six decisions on the issue of «supported by the description» and its implications under Art. 84 EPC. T 1989/18 — 3.3.04 cannot simply be ignored anymore since its approach is explicitly supported by yet another Board in T 1444/20 — 3.3.01. Four other Boards dissented. I feel it is only a matter of time until a Board decides to refer the issue to the Enlarged Board of Appeal; Art. 112(1) lit. a EPC. The sooner the better, to finally get things straight.

A referal by the President of the EPO under Art. 112(1) lit. b EPC is not to be expected, in my opinion.

/MW

T 1989/18 — 3.3.04 (HTML)

Chair: Bart CLAES
Member: Oskar LECHNER
Lukas BÜHLER (lm)

Decision of 16 December 2021:

DISSENTING WITH T 1989/18 — 3.3.04

T 1024/18 — 3.2.06 (HTML)

Chair: Michael HARRISON
Member: Martin HANNAM
Wilhelm UNGLER (lm)
Thomas ROSENBLATT
Claes ALMBERG (lm)

Decision of 1 March 2022:

T 2293/18 — 3.5.02 (HTML)

Chair: Richard LORD
Member: Claudia VASSOILLE
Anna BACCHIN (lm)

Decision of 31 March 2022:

T 0121/20 — 3.2.01 (HTML)

Chair: Giovanni PRICOLO
Member: Andrea WAGNER
Peter GUNTZ (lm)

Decision of 11 March 2022:

T 2766/17 — 3.2.02 (HTML)

Chair: Marco ALVAZZI DELFRATE
Member: David CECCARELLI
Christof SCHMIDT (lm)

Decision of 17 March 2022:

CONSENTING WITH T 1989/18 — 3.3.04 

T 1444/20 — 3.3.01 (HTML)

Chair: Albert LINDNER
Member: Regina HAUSS
Lukas BÜHLER (lm)

Decision of 28 April 2022:

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The Swiss FPC’s tenth anniversary: Eager for the next decade(s)!

Reading time: 5 minutes

Have you been at the symposium in St. Gallen last Friday, at the occasion of the Swiss FPC’s tenth anniversary? Oh man, what a great event that was! I am still quite inspired by the interesting discussions on the merits — and the joyful chats with so many colleagues, live and vibrant again.

I did not take sufficient notes in order to come up with a thorough summary of the whole day. The following are just some of my very personal take-away messages:

Since the beginnings of the FPC, a total of 56 judgments have been appealed to the Supreme Court; only nine appeals have been allowed, fully or in part. Such a 16 percent reversal rate is indicative of the (very) good quality of the first instance judgments of the FPC.

Some discussions circled around the disposal of cases by settlement. Dieter BRÄNDLE referred to it as the finest way of concluding a case («edelste Variante der Streitbeilegung»), for good reasons. However, settlements have become pretty rare in recent years; see the statistics here. This is most likely due to the fact that many cases are just tiny puzzle pieces in multi-jurisdictional patent fights which are not easily settled. Some courts do apply «shuttle diplomacy» in their settlement efforts (sometimes confused with «Einzelabreibungen», i.e. anything but truly diplomatic approaches to push / threaten the parties into a settlement). But it became very clear that the FPC will not try «shuttle diplomacy» in the near future.

The «Saisie Helvétique», a precise description of a presumably infringing embodiment, has not been used very often in more recent times. Why is that? Some said that parties might opt for a PI right away, instead of securing (further) evidence of the last tiny bit of infringment beforehand. Further, a precise description is anyting but cheap, and there may well be other options in particular in an international setup which are more favorable to secure evidence (e.g. a saisie-contrefaçon in France).

On the procedural side, it was discussed whether it should be possible for a plaintiff to base a PI request on the patent in suit in various versions, i.e. with a whole cascade of auxiliary inter partes limitations — or whether that inherently contravenes the necessary urgency. Indeed, I feel it may sometimes be a wise approach in PI proceedings to envoke the patent only to the extent necessary to precisely cover the attacked embodiment; one may still pursue the case more broadly in subsequent main proceedings anyway when time is not so much of the essence anymore (with a PI in place). It will be interesting to see how the FPC will henceforth deal with (too?) many inter partes limitations in PI proceedings.

On the merits, we discussed whether it is (or should be?) possible to just disregard a particular piece of prior art as closest prior art in the assessment of obviousness right away (simply because it is too unrelated to the invention), or whether anything has to be assessed in civil proceedings simply because a party pleaded it. It appears that this question had never been critical in judgments of the FPC by now; but it is still important to know that there is no settled case-law in this respect (see this Blog here).

Further, we briefly touched the formulation of the ‘objective technical problem’ and whether the ‘Swiss finish’ in some judgments is appropriate, i.e. that the problem should be somehow addressed in the closest prior art. See this Blog here for a more detailed discussion of this issue.

Oh, and one should maybe keep this pointed remark of Sir Colin BIRSS in mind when discussing a controversial judgment:

If you ever felt that arguing / pleading a case is difficult; believe me, judging that case is harder.

With respect to the UPC, it became clear that quality of its judgments will be the (most) critical issue for users. Anyway, the UPC will have to deal with this well-known triangle just like any other service provider:

service triangle

The UPC’s goal of 12m for main proceedings was considered as very (unrealistically?) ambitious. Quality will largely depend on the judges; the hiring is currently underway. The goal is to have not too many judges in the beginning (only 50 technically trained judges), both for cost reasons and to ensure that the judges have enough cases to gain experience.

Re opting-out, Beat WEIBEL of Siemens provided some statistical insight: They will opt out for 17.3% of Siemens’ entire portfolio.

The initially published version of the above paragraph erroneously mentioned an opt-out ratio of 12.7%. I confused my notes. The paragraph has been corrected; the correct value is 17.3%

/MW

PROGRAM

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Re-thinking the ‘Fireside Chat’ format: How would _you_ like it? Let me know, please.

Reading time: 3 minutes

Please bear with me, I will skip the April edition of the ‘Swiss Patent Litigation – Fireside Chat’. For two simple reasons: First, I am on holiday (and I do not even have a headset with me). Second, the few things that have happened last month can easily be dealt with in the next session.

What’s your opinion on the format?

Clubhouse logo

I started the ‘Fireside Chats’ more than a year ago on Clubhouse, always on the last Wednesday of a month at 19:00 hrs CET. I still like what I do there, and I had some very interesting discussions already.

But what about you?

Some told me that the time, 19:00 hrs CET, is not ideal. Commuting time, dinner time, family time, etc. Now, what about switching to lunch time, let’s say 12:15 CET?

Which time suits you better?

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And what about Clubhouse in general? What I like about this format is that it really encourages discussion, not consumption. It is audio-only, i.e. the entry barrier is very low. Likewise, participating in a discussion is very easy: Raise a hand, jump on stage and let people know what you think. I do believe that some of the spontaneous discussions I had on Clubhouse would not have been possible e.g. in the comments on a Blog, or LinkedIn. However, Clubhouse is yet another platform, and some might just not want to install yet another app on their devices.

Alternatively, I have seriously considered LinkedIn Live. LinkedIn is the forum where most of my contacts are around, anyway. And LinkedIn Live is not rocket science; it worked well for me in a test drive. However, I am afraid to lose the interactive character of the Clubhouse chats: Listeners may well post live comments or ask questions in the chat, but cannot directly join the discussion. Oh, and you would have to endure the sight of me (which really does not add value); it would not be audio-only.

What do you think:

Clubhouse or LinkedIn?

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Btw, if and when LinkedIn really comes up with what appears to be a Clubhouse / oups / Audio Event feature, I will switch (back) to LinkedIn for the fireside (or lunchtime) chats immediately.

Finally, I wonder whether inviting guest speakers might add value. No, I don’t mean to just ‘simulate’ a discussion that is wholly pre-determined like in a screenplay; I would want to keep the spontaneous character in any dicsussion.

What about guest speakers?

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Thanks for letting me know; your feedback is much appreciated.

Cheers, Martin

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The FPC’s Annual Report 2021

The official Annual Report 2021 of the FPC has been published earlier today. It comes along with an Executive Summary as follows:

In the reporting year, the number of incoming cases rose to 27 compared with the previous year (22 in the previous year). The number of ordinary proceedings was stable (18, previous year 18), while the number of summary proceedings increased (9, previous year 4).

Of the 17 ordinary proceedings handled by the Court, 7 ended by settlement and 8 were adjudicated. Two cases were dismissed for irrelevance. Of the five summary proceedings handled in the reporting year, two were adjudicated and three were dismissed for irrelevance. There number of cases pending at end of the year was slightly higher (30, compared with 25 the previous year).

Income at CHF 895,256 was significantly higher than the prior year (CHF 796,605) which reflects the larger number of cases handled. Despite higher costs of CHF 1,608,466 (previous year, CHF 1,566,306) stemming from a case where legal aid was granted, the deficit declined. The cost-coverage rate attained 56% (previous year 51%).

A closer look at the numbers over time

The overall number of incoming cases is pretty constant. In main proceedings, it’s actually the same as last year. Summary cases more than doubled, compared to the all-time low last year (4).

dyerware.com


 

The overall number of concluded cases grew both in summary and main proceedings.

dyerware.com


 

The ratio of incoming cases (22) to concluded cases (27) is 81%. The backlog grew accordingly, but this is really nothing to worry about.

dyerware.com


 

41% of the main proceedings were disposed of by compromise, which is a little more than last year (14%) — but still far less than what we have seen in the early years. Again, not a single case in summary proceedings was disposed of by compromise.

dyerware.com


 

Beyond the numbers

Only two cases are still pending in which the President Mark SCHWEIZER recused (in view of his prior employment as patent litigator with MLL). One of these two cases has been pending since 2017. We shall learn more about this case soon: The Annual Report notes that disposal of this case can be expected soon.

no hearings here!

The courtrooms at the FAC are properly equipped for videoconference participation since March 2021, which has been used in quite some cases.

It appears that the courtrooms at the Federal Administrative Court (FAC) where the FPC holds its hearings are frequently blocked for internal meetings of FAC personnel, when Covid-19 protective measures demand for a large room. The Annual Report holds that this impairs the finding of dates for hearings.

/MW

ANNUAL REPORT 2021

The Annual Report is also available in German, French and Italian language.

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Hey, Blackstone Resources, what is wrong with you?

Reading time: 12 minutes
DISCLOSURE NOTICE: I am a shareholder of Blackstone Resources AG. A very unhappy shareholder, though.

Admittedly, this post is somewhat out of the ordinary. If you are only interested in jurisprudence of the FPC (fair enough!), then I don’t blame you at all if you just skip this post (or jump further down to some thoughts about Art. 12 PatA).

This post is about my very personal struggles to obtain information that I am undoubtedly entitled to.

Are you still with me? Okay, listen!

I own some shares of Blackstone Resources AG, a self-acclaimed battery technology pioneer. The investment won’t ruin me, but it surely is not the most promising one (SWX: BLS). But how comes investors don’t appreciate the stock? BLS holds that there is not just one, there are actually nine good reasons to buy their shares:

Note that their patented battery technology is the #1 reason to invest. And the corporate factsheet is not an outlier. BLS frequently refers to patent protection. For example, as early as in the Annual Report 2019 BLS refers to a patent:

In more recent times, even some ad hoc notifications according to Art. 53 LR referred to a «patented technology» that is proclaimed to be a «game changer»; see e.g. this one of 2 November 2021:

Btw, did you notice the reference to a «Blackstone Thick Layer Technology ©» in the above? I am hugely impressed by the copyright sign: Beware, BLS might believe that «Blackstone Thick Layer Technology» is a copyrightable creative work. C’mon, seriously?!

Anyway, that’s a different story. Let’s get back to the patent markings.

On 7 December 2021, BLS held a press day at the new facility of its subsidiary Blackstone Technology GmbH in Döbeln, Saxonia (Germany), celebrating the inauguration of its revolutionary battery production facility. It was a heavily promoted event. Needless to say that patents were cornerstone content, again:

Here is the transcript (starting at 15:36):

[…] neue Dinge entwickelt. Und diese haben wir uns natürlich auch patentieren lassen. Wir haben mehrere Patente, die veröffentlicht sind; wir haben mehrere Patente, die noch im Antragsverfahren sind; und […]

BLS in Döbeln, Germany (image courtesy of BLS)

As a patent attorney and investor, I got more and more interested in what these constant references to patents were all about, for heaven’s sake. As per today, I could not find anything pertinent, not for BLS and not for any of its connected undertakings. Thus, I formally asked BLS to provide me with the patent number(s), in accordance with Art. 12 PatA. It couldn’t be any easier. That’s what I thought.

Now, guess what the answer was?

Deafening silence, despite my registered letter. BLS did not even bother to get back to me. Not within the initial time limit, and not after yet another reminder. I wonder:

How can that be?

Remember: BLS is not a backyard workshop, but a listed company.

It would have been very easy to appease me. A single patent application number would have been sufficient to get rid of me, be it a published or unpublished patent application, or even a licensed patent application. Just a single number. But BLS did not even try to comply with their obligation under Art. 12 PatA.

On the other hand, it is not that they did nothing.

look closer …

It happened to be that Christopher Gilb of Luzerner Zeitung had kept an eye on BLS and their patents, too. He reported on 26 January 2022 that BLS had retroactively amended ad hoc notifications on their website, only shortly after my formal enquiry; see e.g. the amended ad hoc notification of 2 November 2021 here. Essentially, «patented» (‘patentiert’) has been amended to «applied for patent» (‘zum patentieren angemeldet’) all over the entire website.

Since it is not that easy to just amend already published ad hoc notifications, BLS subsequently published a correction ad hoc notification on 8 February 2022, soft-pedalling the matter as if all this was merely a clarification. However, there is a huge difference between a patent application and a patent. Anything else is just fuzzy marketing blah.

So, at that point I knew that there were no granted patents. What a pity!

But what about patent applications? Any patent application that had been filed early enough for it to be mentioned in the Annual Report 2019 should already be published by now. But … there is none.

All this leaves a bad taste, to say the least — and it only increases curiosity to dig deeper.

Curtain up!

Thanks to my colleague Philippe Knüsel (oups, he did it again), I am pretty sure that BLS’s patent markings — if they have any merit at all — relate to this patent family, i.e.

and its three priority applications, i.e.

The applicant investHG UG (haftungsbeschränkt) has no prima facie connection with BLS. But the inventor and director of investHG has: Holger Gritzka is CEO of BLS’s connected undertaking Blackstone Technology GmbH in Döbeln, Saxonia (Germany) since 2019. This cannot explain the mentioning of patents already in the Annual Report 2019 (published on 24 April 2020), simply because the three priority applications were only filed on 26 June 2020. And this patent family had not yet been published at the press day of 7 December 2021 (the applications were only published on 29 and 30 December 2021, respectively). But, maybe, BLS manages to resolve this with some clarification.

Note that the purpose of investHG UG is to hold equity / shares of other companies (‘Beteiligung an Unternehmen’). According to the commercial register, investHG does not hold any shares of Blackstone Technology GmbH (see here). For the publicly listed BLS, the situation is not fully clear to me.

Does BLS and/or Blackstone Technology GmbH have a license under the patent family? Maybe. But I wonder: If there was a license in place, it could have been a no-brainer to just give me the number(s) of the patent application(s).

If you wonder what kind of company a «UG (haftungsbeschränkt)» is: It is a petty form of a limited liability corporation (GmbH) in Germany which can be funded with just one EUR paid-in capital. investHG is a little better funded (paid-in capital of EUR 1’000,–), but at least in terms of liablity it would not be my favorite licensor to build a revolutionary business on. But if that is BLS’s choice, so be it.

Now, what is the patent family all about?

It appears that the subject-matter of all three priority applications had been combined into EP 037 — which led to a non-unity objection at the EPO. However, claims 1 of EP 037 and DE 944 are identical:

In essence, I feel that the gist of DE 944 is to use a sieve printing paste that is thixotropic. The EPO has established a partial search report and a provisional opinion at least for this invention, and this report is anything but positive. What seemed to be a home run for the applicant at the GPTO (with an essentially unreasoned indication of allowability) is severly challenged at the EPO.

No indication from the EPO is available to date for the other two inventions. The second invention, which is the subject-matter of DE 945, is about sieve printing a side wall of the battery and sieve printing an electrode onto that side wall. See claim 1:

In a first office action, the GPTO held that this claim is not novel, and that only some dependent claims might be patentable. Yet, again, without any reasoning whatsoever with respect to non-obviousness. We shall see.

Finally, the third invention (which is the subject-matter of DE 946) is essentially about sieve-printing an electrode in two layers. See claim 1:

The GPTO held in a first office action that, again, only some dependent claims might be patentable. But, you guessed it: Without any reasoning whatsoever with respect to non-obviousness.

It will be interesting to follow the further course of proceedings at the GPTO and in particular at the EPO. I wonder: Is this patent family really what BLS believes to be a game-changer in battery production technology? Hail Mary!

UPDATE of 22 Feb 2022:

We just came across yet another interesting patent application, i.e. WO 2021/245210 A1,  claiming a priority of 3 June 2020 (CH 661/20). The sole inventor is Ulrich Ernst himself, the CEO of BLS. He had also been the applicant / owner of both the priority application and the PCT application.

Interestingly, Mr Ernst only recently assigned all rights (ownership and right to use; «überträgt hiermit ausnahmslos und vorbehaltlos alle Eigentums- und Nutzniessungsrechte») with effect of 28 January 2022 to the new holding vehicle Blackstone Technology Holding AG (which is wholly owned by BLS). Accordingly, when the assignment was executed, all rights in the application were held by Mr Ernst personally — not by BLS. The written opinion of the EPO acting as the International Search Authority is negative for all claims.

What is more, there is yet another patent family that had been assigned from Mr Ernst himself to Blackstone Technology Holding AG on the same date (28 January 2022), i.e. EP 3 888 161; see the EPO Register and the assignment document. It appears that the underlying PCT application WO 2020/109351 A1 has only been nationalized at the EPO. The International Preliminary Report on Patentability (IPRP) looks promising (for a very specific method of sieve printing electrodes, though).

In a nutshell, my understanding now is that there were indeed some patent applications around, but that BLS only very recently got ownership and use rights straight. Finally. /MW

Why not just suing them?

Before I came across the above-mentioned patent family, I seriously considered suing BLS to finally learn which patent(s) they refer to. I really did. My line of thinking was simple:

According to Art. 12 para. 1 PatA,

[a]ny person who issues or offers for sale his business papers, notices of any kind, products or goods bearing any other notice referring to patent protection must inform any third party on request of the number of the patent application or the patent to which the notice refers.

BLS obviously frustrated my substantive right to information. If Art. 12 PatA is not just empty words, there should be a meaningful way that a court orders BLS to comply with the law and tell me the number(s), right? At first glance, I even considered legal protection in a clear case as an option; Art. 257 CPC.

Oh man, if it only was that easy. I stopped short of actually drafting a complaint when I noticed in Schweizer/Zech – Jürg Simon, Art. 12 PatG, N 15 that according to common opinion the right to information under Art. 12 cannot be enforced at court (with reference inter alia to Blum/Pedrazzini, Patentrecht, Art. 12 N 8).

And, indeed, the situation is tricky:

    1. Art. 72 PatA is of no help because it exclusively refers to acts referred to in Art. 66 PatA.
    2. Seeking a declaratory judgment in accordance with Art. 74 PatA would work, but what for? I don’t want to have a judgment confirming BLS’s misconduct, I want BLS to just stop it and give me the number(s).
    3. Art. 41 CO: Seeking compensation for unlawfully caused damages? Calculating damages really is not what an investor would want to do. It’s about avoiding damages and making an informed decision about the investment.
    4. Precautionary taking of evidence might be an option; Art. 158 CPC para. 1 lit b: An investor should well have the required ‘legitimate interest’. But then what? I would not want to initiate main proceedings thereafter; why would I?

For some reason, the legislator back in the days only considered situations where the one who is asking for information is a competitor who might be sued for infringement of the very same patent later; see the dispatch of the Federal Council of 1950. That’s not my concern. I simply want to re-consider my investment, taking into account the presumably ground-breaking and patented technology. I can’t.

If I didn’t have a job to do and more enjoyable opportunities to spend my money, I’d love to test the waters in court. But I have now swallowed my anger — after reguritating it with this post.

I am done with BLS. Want some shares? You can have mine.

/MW

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The Swiss FPC’s tenth anniversary: Don’t miss the symposium on 6 May 2022

Time flies. Ten years have now already passed since the Federal Patent Court became operational. Time to look back, to reflect, and to take a sneak peek into the future.

Towards this end, the FPC is organizing a not-to-be-missed symposium on Friday, 6 May 2022 in St. Gallen:

Europäisch harmonisiertes Patentrecht und nationale Patentgerichte: Rückblick und Ausblick

Please see the detailed program below for further information. Registration via an online form is open until 18 March 2022.

Oh, btw, it will be an in-person event. Real people meeting real people again, at a great location … 🙂

Reported by Martin WILMING

PROGRAM

REGISTRATION FORM

Please register online here.

MAP

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Job opening: Secretary General / Court Clerk at the FPC

Reading time: 2 minutes

There is a job opening at the Federal Patent Court for a Secretary General / Court Clerk (80-100%); see below (a PDF is available here, just in case the hyperlink expires).

The application deadline is 28 January 2022, for an entry date of 1 March 2022 (or as agreed upon).

The current First Court Clerk is Susanne ANDERHALDEN, and Dr. Lukas ABEGG is Court Clerk; see here. Both these positions are well foreseen in the Regulations on the Federal Patent Court, Art. 5 and Art. 9. I wonder whether the position of a Secretary General is actually a new one(?). Unlike for the other Federal Courts (FSCA, Art. 15(1) lit. f; FACA, Art. 16(1) lit. g; CAOA, Art. 53(2) lit. g), the position of a Secretary General at the FPC is not explicitly foreseen in the law, if I am not mistaken. We shall see.

Reported by Martin WILMING

UPDATE 03 January 2022

From the below Tweet of earlier today, I understand that the FPC is actually looking for a ‘First Court Clerk’, with some further administrative tasks (‘Stabsaufgaben’); salary category 28.

JOB OFFER

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The revival of in-person oral proceedings as the default format in post-pandemic times

Reading time: 7 minutes

‘Oral proceedings’ by videoconference without the parties’ consent has been the uproar of the year; see this Blog here for some background information. Positions could hardly have been more irreconcilable. The Enlarged Board of Appeal had to step in to resolve the issue. It did so, in stages. The operative part of G 1/21 had been published already on 16 July 2021:

During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.

But this obviously clarified things only to a very limited extent, i.e. (i) for proceedings before the Boards of Appeal; and (ii) for times of ‘general emergency’. It remained unclear what that meant for the first instance bodies of the EPO, and for non-pandemic times.

Meanwhile, the reasoned decision of the EBA has been published on 28 October 2021, accompanied by a press release.

The reasoning of the EBA is straight-forward.

Interpretation of article 116 epc

The EBA had no doubt that those involved in the legislative process leading to Art. 116 EPC 1973 had in-person oral proceedings in a courtroom in mind (¶ 26). However, that does not mean that ‘oral proceedings’ were meant to be limited to this particular format:

In the EBA’s view, it is improbable that the legislator wished to rule out potential future formats which would allow the parties to appropriately plead their case orally (¶ 28-29). Accordingly, the EBA holds (¶ 30):

[O]ral proceedings in the form of a videoconference are oral proceedings within the meaning of Article 116 EPC.

The EBA notes in passing that holding differently would have meant that oral proceedings by videoconference would take place in a legal vacuum, meaning that the provisions and practices relating to oral proceedings would not apply either (¶ 31). I understand that this is not only a forward-looking statement, but would consequently also have applied to videoconferences that had already taken place. Obviously, this would have resulted in a complete mess.

Is a videoconference equivalent to in-person oral proceedings and, if not,  is it a suitable format for conducting oral proceedings?

The equivalence of both formats had been postulated in various decisions of the President (see e.g. here, Art. 1(3)), and this alleged equivalence was much debated.

The EBA’s take on this is very clear (¶ 38):

[C]ommunicating via videoconference cannot, at least for the time being, be put on the same level as communicating in person.

Accordingly, both formats are not equivalent — even though the EBA avoided to bluntly say it that way but rather softpedalled it as «not fully equivalent» (¶ 44). In my view, future developments of the kind of Google’s Project Starline may indeed further narrow the gap between the two formats. But we are clearly not yet there.

But at the same token, the EBA held (¶ 40):

In combination with the written part of the proceedings [a videoconference] normally is sufficient to comply with the principles of fairness of proceedings and the right to be heard.

The EBA therefore comes to the Solomonic conclusion (¶ 43):

[T]he limitations currently inherent in the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party’s right to be heard or right to fair proceedings is seriously impaired.

The role of the parties’ consent

Here we are at the heart of the dispute: Can ‘oral proceedings’ by videoconference be imposed on a party, despite its shortcomings but in view of the EBA’s finding that they are normally okay in terms of the party’s right to be heard and the right to fair proceedings?

The EBA held in no uncertain terms (¶ 45):

[I]n-person hearings should be the default option. Parties can only be denied this option for good reasons.

In setting the stage, the EBA even refers to the in-person format as the ‘gold standard’ (¶ 45). Now, what are these «good reasons» for which a party may be denied the gold standard?

First, «a suitable, even if not equivalent, alternative» must be available (¶ 48). In view of the foregoing, a state-of-the art videoconference will normally be sufficient in this respect.

Secondly, «there must also be circumstances specific to the case that justify the decision not to hold the oral proceedings in person» (¶ 49). This cannot be emphasized enough: It is not (anymore) that a party has to establish why a videoconference is inappropriate in a specific case. It is rather the other way around. What is more, the «circumstances specific to the case» are very limited (¶ 49):

These circumstances should relate to limitations and impairments affecting the parties’ ability to attend oral proceedings in person at the premises of the EPO.

That’s it: A clear-cut criterion, not just an example of what else might come to mind as a «circumstance specific to the case». The EBA went even further and held that «administrative issues such as the availability of conference rooms and interpretation facilities or intented efficiency gains» (sic!) are irrelevant.

Thirdly, «the decision whether good reasons justify a deviation from the preference of a party to hold the oral proceedings in person must be a discretionary decision of the Board of Appeal summoning them to the oral proceedings» (¶ 50).

Finally, the EBA notes that the European Court of Human Rights apparently dealt similarly with the issue; see the ECHR’s Guidelines on Hearings by Videoconference (¶ 1-2).

Now, what does that mean for first instance proceedings?

The EPO had switched to ‘oral proceedings’ by videoconference as the default format in examination proceedings with decision of the President of 17 December 2020. Not as a pilot or during pandemic times only, but rather permanently. The current pilot for ‘oral proceedings’ by videoconference in opposition proceedings is coming to an end on 31 January 2021.

The reasons of the EBA are crystal-clear and in no way specific for ‘oral proceedings’ before the Boards of Appeal; Art. 116 EPC applies equally to first and second instance proceedings. Accordingly, there will have to be changes to how ‘oral proceedings’ are being conducted in first-instance proceedings: In non-pandemic times, in-person oral proceedings will have to be the default format again. Which I truly feel is good.

On the other hand, we have witnessed an extensive field test of videoconference ‘oral proceedings’ at the EPO during the pandemic. Many practitioners surely have appreciated the possibility of ‘oral proceedings’ by videoconference. Including me. This will no doubt spill over to non-pandemic times, i.e. many practitioners will happily choose the videoconference format for many ‘oral proceedings’. Voluntarily. Which, again, is good.

On a personal note, I feel that the EBA’s reasoning is so straight-forward and self-evident that what troubles me most in retrospect is that a referral to the EBA was necessary at all.

Reported by Martin WILMING

G 1/21 — Decision of 16 July 2021

Composition of the Enlarged Board:

Chairman: Fritz BLUMER
Member: Wim VAN DER EIJK
Tamás BOKOR
Richard ARNOLD
Evangelos CHATZIKOS
Gunnar ELIASSON
Andrea RITZKA


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PatA revision: The dust is settling (slowly)

Reading time: 3 minutes

The envisaged changes to the Swiss PatA have caused a very intense discussion amongst stakeholders. Opinions could hardly have been more different, ranging from outright damnation of examination on the merits («bureaucratic monster») to wholehearted welcome («overdue»).

See this Blog here for some background information about how it all started; the draft bill is commented on this Blog here.

There had been a public consultation of the draft bill, with a lot of individual contributions. An official summary of the contributions is available here.

Now, the dust begins to settle. The Federal Council has informed the public on 18 August 2021 that some (major) adjustments will be made to the draft bill, as follows.

The tried and tested ‘unexamined’ Swiss patent is staying

In general, a patent application will not be examined on the merits, i.e. for novelty and inventive step. As a result, an ‘unexamined’ — but less expensive — IP right will continue to be available to inventors, as called for by the motion.

In turn, the unexamined utility model (with reduced term) that was foreseen in the draft bill is off the table.

fully examined Swiss patent on request

It shall be possible to request examination on the merits.

What is not fully clear to me, though, is whether only the applicant may request examination, or whether any third party can also do so (like, e.g., in Germany; §44(2) PatA). I have much sympathy for the latter. It is an element to improve legal certainty, which is an explicit aim of the motion.

Compulsory search reports

To improve legal certainty also for the ‘unexamined’ patent, every patent application shall be supplemented with a compulsory search report. The Federal Council holds that it will therefore be possible to better evaluate whether the invention is patentable.

I doubt that this will really improve legal certainty. A negative search report is mostly not the end but rather the beginning, i.e. the beginning of a thought process on the applicant’s side of how to proceed to grant. In most cases, there is patentable subject-matter. A negative search report might provoke a counter-productive ‘no risk’ illusion for the public.

Further, I wonder how tax authorities might react on a ‘negative’ search report in the context of the patent box. It would be a pity if this creates a ‘presumption of invalidity’ and applicants then have to go the long way through examination on the merits in order to benefit from the patent box.

Streamlined appeal procedure at the FPC

The opposition procedure introduced in 2008 shall be dispensed with altogether. It had never been used anyway.

Instead, the Federal Council intends that IPI decisions be reviewed in appeal proceedings directly through the FPC. I understand that this shall also apply to the decision to grant a patent, i.e. that third parties will be able to challenge the grant directly at the FPC, as foreshadowed by the opinion of Prof. Rainer SCHWEIZER:

It remains to be seen how this will actually be put in place, but with a (very) low threshold for the necessary legal interest of a third party and competitive fees of the FPC for these proceedings, I have no doubt that this will work smoothly.

The Federal Council has mandated the Federal Department of Justice and Police (FDJP) to submit a dispatch by the end of 2022.

Reported by Martin WILMING

SUMMARY OF PUBLIC CONSULTATION

INDIVIDUAL SUBMISSIONS

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