UPC: Case summaries and PPT presentations at hearings

Reading time: 2 minutes

It’s interesting these days to follow how the UPC approaches certain procedural things. According to a recent order of the Central Division (Section Munich) a party was allowed to use slides as demonstratives at a main hearing. From a Swiss perspective, this is what we are used to have in main hearings at the FPC, too. Such slides may not introduce any new facts or substance to the case. (This goes without saying, I believe.)

Notably, the Judge Rapporteur required that the number of the slides be communicated to the court at least six (6) weeks before the hearing date (with opposing counsel in CC), and that the respective other party shall be entitled to use the same number of slides. The number of slides shall be ‘reasonable’. The slides as such are to be provided at least four (4) weeks before the hearing (in my reading: to the court only, not to the other party yet). 

The Swiss FPC is a lot more flexible in this respect. One may just bring the slides on the day.

What I particularly like in the UPC order is that the slide deck shall come along with

a table indicating exactly where in the pleadings/evidence already on file the contents of the slides can be found.

See the last sentence in the snippet above. That makes a lot of sense to prevent cumbersome discussions on the spot about whether or not something had already been pleaded earlier. Irrespective of a court order, I think it’s good practice to include such information on/with the slides anyway.

Moreover, the Judge Rapporteur allowed the parties to submit a case summary, provided that this does not introduce any new arguments, evidence or facts into the case:

Yet again, this case summary has to be submitted well in advance of the hearing, i.e. about two (2) months. A pretty strict word count applies: 7’500 words, which means about fifteen (15) pages. This reminds my of the skeleton arguments in the U.K. I like it!

✍ MW

UPC ORDER

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The FPC’s Annual Report 2023

The official Annual Report 2023 of the FPC has been published earlier today (12 March 2024). It comes along with an Executive Summary as follows:

In the reporting year, the total number of incoming cases increased to 31 (previous year 24). There was a significant increase in the number of ordinary proceedings (20, previous year 13), while the number of summary proceedings was unchanged (11, previous year 11).

Of the 21 ordinary proceedings handled by the Court, four were settled and 14 were adjudicated. Three cases were dismissed for irrelevance. Of the 11 summary proceedings handled in the reporting year, nine were adjudicated, one was settled and another one was dismissed for irrelevance. The number of cases pending at end of the year was practically stable at 28 (previous year 29).

Income declined to CHF 679,987 (previous year CHF 960,624) mainly because the court fees for part of the settled proceedings cannot be recognized in accounting before the rulings become final and enforceable. As a result, although expenditure was slightly less than the prior year – CHF 1,522,108 as against CHF 1,548,036 – the deficit was significantly higher at CHF 842,121 (previous year CHF 587,412). The cost-coverage rate attained 45% (previous year 62%).

Let’s first put the case numbers into perspective:

A closer look at the numbers over time

Incoming cases

The number of incoming cases in summary proceedings (S) remained stable, i.e. at the all-time high of 11. On the other hand, the number of incoming cases in main proceedings (O) increased sharply, by more than 50%. Twenty new cases have been filed, which is the fourth-highest number since the opening of the court in 2012:

Incoming cases in 2023

On the long run, the numbers for 2023 are nothing out of the ordinary. Here’s the arithmetic average ± standard deviation of incoming cases over the whole time frame of 2012-2023:

# incoming cases, p.a.  
Main proceedings 17.4 ± 4.2 (2023: 20)
Summary proceedings 8.1 ± 2.4 (2023: 11)
Total 26.2 ± 4.9 (2023: 31)
Concluded cases

More cases have been concluded in 2023 than in 2022, both in summary proceedings (2023: 11; 2022: 10) and main proceedings (2023: 21; 2022: 15):

Concluded cases in 2023

Again, on the long run, that’s nothing out of the ordinary. Here’s the arithmetic average ± standard deviation of concluded cases over the whole time frame of 2012-2023:

# concluded cases, p.a.  
Main proceedings 18.8 ± 4.2 (2023: 21)
Summary proceedings 8.0 ± 2.6 (2023: 11)
Total 26.9 ± 5.6 (2023: 32)

The ratio of incoming cases (31) to concluded cases (32) is about 97%. That’s what I’d call a stable workload. 28 cases were pending at the end of 2023.

Only four of the main proceedings were disposed of by compromise (∼ 19%), which is less than last year (33 %) and much less than in 2021 (41%). Only one case in summary proceedings was disposed of by compromise. Here’s the share of cases that were disposed of by compromise over time:

Settlements in 2023 (Copy)

The initially (very) high numbers of settlements are clearly a thing of the past.

Beyond the numbers

German has again been the language of most of the proceedings (main proceedings: 75% German, 25% French). One of the summary proceedings has been filed in Italian; nothing has surfaced about this case by now.

The line-up of judges has changed slightly in 2023; see my notes on Linkedin for further information (all judges have been elected as proposed by the Judicial Commission):

The last case in which the President Mark SCHWEIZER had recused himself was settled in the reporting year (which I’m sure is O2020_006).

The FPC for the second time reports about changes of the panels of judges. In the reporting year, it happened only once that a ground for recusal was discovered only after the panel had already been formed (2022: twice). The FPC’s Rules of Procedure have been revised to specifically address the panel formation and subsequent changes in panel formation; see Art. 7 paras. 4 and PR-PatC (enacted 1 July 2023).

✍ MW

ANNUAL REPORT 2023

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

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Suspensive effect of post-grant appeals: Don’t enact it like this, please … 🙏

Reading time: 4 minutes

I have reported several times about the substantial revision of the Swiss Patent Act that is currently in the making; see e.g. this Blog here.

Back in parliament, the Science, Education and Culture Committee (SECC) of the Council of States has now requested some changes; see the ‘Fahne’ below, p. 22-23 (available online here). The proposed changes are apparently meant to address two issues that have been raised earlier e.g. by Lara Dorigo, Alexandra Bühlmann and Thomas Legler; see here.

But, unfortunately, the issues are anything but fixed.

Suspensive effect of appeals

On a quick read, I was happy to see that the suspensive effect was essentially gone. The Council of States requests that an appeal against the grant of a patent shall not have suspensive effect. At least not as a rule: The IPI may exceptionally (“ausnahmsweise”) issue a grant with suspensive effect. Likewise, the FPC may order suspensive effect when an appeal has already been filed.

The closer I looked, the more grumpy I became.

The default of ‘no suspensive effect’ shall apply to appeals according to paragraph (2) only:

The issue is that this paragraph (2) pertains exclusively to appeals that raise objections with respect to certain exclusions from patentability (the human body, gene sequences, etc.):

In practical terms, this is a complete non-issue. Oppositions have been possible for the very same reasons since 2008 (Art. 59c PatA). Not a single opposition has been filed ever since. Zero. This speaks volumes. The requested change is devoid of any practical relevance.

What really matters for third parties are substantive issues like novelty, inventive step, allowability of amendments, etc. This is where the action is. However, all these grounds are only dealt with in paragraph (3):

Appeals raised on such grounds would still have a suspensive effect. Let’s face it: This will affect essentially all appeals!

I am not aware of any major IP jurisdiction where post-grant opposition/appeal proceedings would make a patent unenforceable by default during pendency of the opposition/appeal proceedings. 

It must not be forgotten that the supposed-to-be revamped Swiss patent is not without alternative in order to get patent protection in Switzerland. A European patent validated in Switzerland gets you exactly there, too. Potential applicants will vote with their feet. Frankly, I simply cannot sell anyone a Swiss patent that is granted with suspensive effect, i.e. which is not immediately enforceable. The revamped Swiss patent won’t be substantially cheaper than a European patent validated in Switzerland, it won’t proceed to grant substantially quicker (if at all), the IPI will first have to earn a reputation for examination on the merits (the EPO is still a benchmark in this respect, despite some concerns) — and on top of all these challenges, Swiss patents shall be granted with leg irons?

This is a very, very bad idea.

I wonder why there should be any possibility for a suspensive effect at all, ever. If we don’t get rid of the suspensive effect, the whole reform might become non-starter. And I really mean this in the sense of ‘Rohrkrepierer’. The suspensive effect is a strong disincentive to choose a Swiss patent. It will end up as a shelf warmer.

I had the slight hope that the reference to paragraph (2) was only a typo. But, apparently, it is not. The press release of the SECC reads as follows:

Ein Verbandsbeschwerderecht, wie es die Revisionsvorlage vorsieht, lehnt die Kommission ab. Sie schlägt eine Regelung vor, welche Dritte berechtigt, mit einer Beschwerde die Patentauschlussgründe gemäss Artikel 1a, 1b und 2 des Patentgesetzes (PatG) geltend zu machen. Grundsätzlich hat eine solche Beschwerde keine aufschiebende Wirkung, wobei die Beschwerdeinstanz diese ausnahmsweise einräumen kann.

I take from this that the exclusive reference to paragraph (2) is intentional.

Further, what I dislike is that third parties have a right to appeal against the grant on substantive grounds such as e.g. novelty or inventive step only in accordance with Art. 48 APA.

Why does it have to be so complicated and restrictive?

A patent has erga omnes effect. Why should a third party need to demonstrate «interests worthy of protection» or to be «specifically affected» by the patent? In substance, the appeal against the grant will be opposition proceedings. Such proceedings are ‘Popularrechtsbehelfe’ all around: At the EPO (Art. 99 EPC, «any person»), in Germany (§ 59 PatA, «jedermann»), etc.

Right for organizations to appeal

The draft bill had included a specific provision for organizations’ right to appeal. The Council of States proposes to delete this.

This makes perfectly sense to me, for all the good reasons given e.g. by Lara, Alexandra and Thomas.

✍ MW

FAHNE 2023 IV S

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🇨🇭 Patent Litigation // 🔥 Fireside Chat #26 // 27 September 2023

Just in case you missed the LinkedIn Live session of Wed, 27 September 2023, here’s a recording:

This episode covers the following:

👉 H. Lüdi + Co. ./. Wobatech
O2021_018: Judgment of 31 August 2023

👉 C&E Fein, Robert Bosch ./. Coram Tools
O2022_002: Hearing of 14 September 2023

👉 VESPA evening seminar: Case-law of the FPC
14 September 2023 in Zurich, w Tobias Bremi

👉 Election of Judges at the FPC

✍ MW

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🇨🇭 Patent Litigation // 🔥 Fireside Chat #25 (at lunchtime) // 30 August 2023

Just in case you missed the LinkedIn Live session of Wed, 30 August 2023, here’s a recording:

This episode covers the following:

👉 Koninklijke Douwe Egberts ./. Delica
S2022_009: Judgment of 19 July 2023

👉 Bayer ./. Acino
S2023_006: Judgment of 25 July 2023

👉 myStromer ./. Revolt Zycling
S2023_002: Order of 8 June 2023, Judgment of 10 July 2023
Background information on this Blog here

👉 Nestlé ./. K-fee System
O2022_003: Judgment of 2 August 2023

👉 C&E Fein, Bosch ./. Coram Tools
O2022_002: Hearing of 14 September 2023

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Productivity vs Quality at the EPO: A rare glimpse behind the curtain that’s worrying

Reading time: 16 minutes

What is quality, in general? It may mean different things to different people.

The most recent discussion about (perceived) quality issues at the EPO has been going on for quite some time. Actually, it goes back to as early as 2018 (at least); see e.g. this letter. The EPO published its Patent Quality Charter in September 2022, almost simultaneously with the Industry Patent Quality Charter (IPQC) by a group of some of the EPO’s top key account applicants (Bayer, Ericsson, hp, Nokia, P&G, Qualcomm, Roche, Siemens, Syngenta, Vodafone). The signatories of the IPQC had some exchange of views with the EPO, and they put some very specific suggestions / requests for information on the table. Interesting points, indeed. But my understanding is that the discussion is now at a standstill. Again.

I stayed out of it for a long time. I felt that I had too little knowledge of the facts, and I don’t like to discuss hearsay and fuzzy perception.

What does quality mean to the EPO? A lot. The EPO has dedicated a whole website section to Delivering Quality; here’s the header:

Top priority

The Patent Quality Charter is the cornerstone of the EPO’s ‘commitment to quality’. But it does not define quality, really. It says that the aim is to deliver ‘high-quality patents and services’ and it outlines a whole lot of measures that the EPO says it follows to achieve that. There is nothing wrong about it. But, frankly, it’s a fluffy read. It’s ‘quality lyrics‘, indeed. It feels good and comfy, but it slips through ones fingers and one cannot really tell what it means in daily practice.

On the other hand, the EPO’s most recent Quality Report 2022 is a book of 80 pages. I was hoping for a more tangible definition of (high or highest) quality. There is none, I believe. Not even in the chapter ‘A shared understanding of quality‘. But the Executive Summary allows for some reverse-engineering:

Whatever high quality of a patent or a patent service is, it cannot mean less than what is objectively necessary to

[…] deliver the highest levels of legal certainty and predictability.

Now, that is something. A superlative. In the right place. I take from this that the EPO won’t settle for anything less. Great!

But why then all the fuss about quality issues? I did not get it. Until recently.

My interest in this topic grew dramatically when I read in the Stuttgarter Zeitung that some internal instructions at the EPO were essentially saying that the clarity of a patent is not a priority, and that inventive step is not to be examined in depth. I was taken aback. Inevitably, this cannot result in work products that deliver the highest levels of legal certainty and predictability. Quite the opposite.

I asked my LinkedIn network whether anyone has the respective document(s) at hand:

And, indeed: I got hold of two EPO-internal emails, one from January 2023 and the other one from March 2023. I have no reason to believe that they are not authentic. I have redacted the emails myself: Specific names, directorates, email addresses etc. just do not matter. My focus is on content. Both emails were sent by the same EPO director with responsibility for two directorates of DG1. Examiners are primarily addressed in terms of content, as well as (for whatever reason) other directors, a member of the ombuds office and top management of DG1. The subject line of both emails is:

Friday Note

Let’s see what the examiners of the two directorates get to read from their director as a message for the weekend. I have rehashed the emails. Quite often. And I have tried to give the author the benefit of doubt to the extent possible. I really did. Still, I’m pretty shocked. In my perception, the emails convey two messages, loud and clear:

    1. It is production that matters, first and foremost.
    2. Quality? Come on. Don’t be so complicated.

Here is why.

Production is king

One of the emails closes as follows:

So yesterday I’ve informed the TMs [team manager] that the situation will have to improve, very soon. Not because production is the only thing that counts, it’s because production is the only thing that guarantees our payslip on the 26th of every month.

I was about to just tick that off as a matter of style, and move on. But, think about it: Does that mean that the monthly salary of examiners and directors is directly connected to a certain production number? Maybe. We cannot know. The EPO does not publish incentives for examiners, even though IPQC asks for exactly this information (see here, item #5).

It was not even end of January 2023 when this director let his people know:

One may or may not share this director’s opinion that a daily control / demand of certain production numbers makes much sense for knowledge workers. I don’t. Peter Drucker comes to mind:

Moreover, because knowledge work cannot be measured the way manual work can, one cannot tell a knowledge worker in a few simple words whether he is doing the right job and how well he is doing it.

Anyway. This director is sold on numbers. For the March 2023 email, even more data was available. The situation had not improved:

Offering support for those who are below the production target is a good thing. I guess. Depending on the kind of support. Which brings me to the second topic: Quality.

Quality is thrown under the bus

The January 2023 email has a large section about quality. The director refers to ‘The Universal Better Curve’ and holds:

We don’t want ‘Epic’. (In the same curve, ‘Good’ and ‘Great’ are not good enough).

A universal truism. But the director’s reasoning is a stunner. The examiners are pointed to certain safety nets (three person division, team manager, formality officers, appeals/opposition, litigation) in the EPC:

The safety net options according to the EPC were designed knowing we would not be perfect, so an examiner insisting on guaranteed perfection is not working in line with the EPC.

Really? This is not my reading of the Travaux Préparatoires of the EPC. It really is nonsensical to me. It perverts the gist of a system that was meant to be set up in a way that provides for ‘highest guarantees‘. And it is a very slippery slope: It’s a prime example of diffusion of responsibility. It doesn’t really matter what I do; someone else will care. This can’t be it.

The director then goes on to draw a parallel with the aircraft industry: Aircrafts are not perfect, but still widely accepted despite their imperfection. With all due respect, this quite likely is the most inappropriate comparison one can think of:

    • First, the aircraft industry is one of the most closely regulated industries in the world, and aircrafts are built strictly according to specs accepted by the regulators. Quality at the EPO is not regulated externally.
    • Second, aircrafts are extremely reliable. When you took a flight in 2022, your chance that this aircraft fatally crashed was 0,00000016%. That’s not much, really. Rumor has it that more people in the world are kicked to death by donkeys than die in plane crashes. Apparently, both regulators and aircraft manufacturer do a good job. Aircrafts are not perfect, that’s true. Nothing is. But they are pretty close.

How well does the EPO perform in comparison? Let’s have a look at the Quality Report 2022 again. It reports about audits made in 2021 and 2022 on more than 800 files each year that proceeded to grant:

Don’t be misled by the large greenish parts of the bars. This is anything but impressive. The remainder of 23.4% faulty dossiers in 2022 is huge. If an audit in my firm revealed that roughly every fourth work product has issues in the assessment of novelty, inventive step, sufficiency of dislosure, or clarity, I would jump up and go re-check the insurance. Clearly, it would be the top priority to sort this out. Whatever it takes

What is most alarming is that it apparently doesn’t get any better. After the 2021 results, the EPO’s target for 2022 was 85% — which tells me that this was rightly seen as an important thing to work on. In my perception, 85% is anything but an ambitious goal. But, be that as it may: 76.6% in 2022 falls short of this mark, again, by far. 

That’s quite a difference to the aircraft industry, isn’t it?

I am tempted to challenge this director with a different comparison: Journalism. There is good and bad. And much in between. They all have their audience. Little regulation, if any. Now, what about a news magazine that has bugs in about every fourth of their investigated stories? Would you call it ‘quality journalism’?

The hands-on advice in these emails on how to reach the production target is worrying in terms of quality because they run against the EPO’s explicit aim of delivering the highest levels of legal certainty and predictability. The advice is inconsistent with the Guidelines. But the Guidelines trump everything within DG1: As set forth in the foreword,

[…] parties may expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended.

Now, what can users really expect after all?

Clarity: What can be assessed in terms of novelty and inventive step is clear (enough)

As a rule, clarity should not be the most extensively discussed aspect in a typical office action. But is it really this easy:

I don’t think so. Anyway, with the benefit of doubt: The director does not say here (yet) that clarity should not be addressed at all when the claim is understandable enough for the assessment of novelty / inventive step. Examiners should simply not deal with it as the first item.

But later, the director copies a piece from yet another document (further internal instructions, maybe?) as a summary:

I am having a hard time to actually match title and content here. The mere fact that a claim can be understood to an extent that allows for the assessment of novelty / inventive step does not mean that the claim is clear. Clarity according to Art. 84 EPC is to define the metes and bounds of a claim. A claim may have a severe clarity issue, e.g., in the preamble due to a feature that does not have anything to do with the actual invention. Assessment of novelty / inventive step is not hindered by such a lack of clarity. But this has to be addressed and eliminated before grant. Issues of this kind are not just of a formalistic or typographical nature. That’s a fatal misconception. I fail to see how clarity issues of this kind are being dealt with in the above cheat sheet of when and how to apply Art. 84. That’s worrying.

Don’t get me wrong, I am not advocating for an acadamic or unrealistic approach to clarity here. Just a complete one. The Guidelines give a lot of guidance in this respect, and they rightly hold:

The clarity of the claims is of the utmost importance in view of their function in defining the matter for which protection is sought.

This doesn’t leave much room for shortcuts in order to increase production. The above cheat sheet does not live up to this standard.

Inventive step: Lowering the bar

Assessment of inventive step at the EPO is done according to the problem-solution approach. The final step is the actual assessment of obviousness, according to the could-would approach (highlighting added):

In the third stage the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves

On the contrary, this director holds as follows:

This is not what the Guidelines say; see above. The motivation or reason to come up with the distinguishing feature does not need to be derived from the best / closest prior art. In fact, this will hardly ever be the case. If this were the threshold for passing the obviousness assessment, almost everything is inventive.

The fact that this argument is sometimes brought forward by prioprietors in opposition proceedings does not mean that it is a good one. The contrary is true, in my perception: It is always a first indication that they don’t believe (anymore) that they can win their case when they continued playing by the rules (the Guidelines, I mean).

If this director’s position sets a precedent (or is already popular in other directorates), it will inevitably lower the bar in the assessment of obviousness. One may want that or not (I don’t). But as long as the Guidelines stand as they are, the public may legitimately expect that examiners are trained and encouraged to apply them, not to sneak around and bend them for an increase of production in return.

What can be done?

I firmly believe it is high time to re-adjust priorities.

When even an internal(!) audit reveals that about every fourth dossier that proceeds to grant is faulty, and when even a modest attempt to improve the situation failed (by far!), then it’s high time to reduce the hustle. Users would not mind if the average office action took a few days or even weeks longer if that resulted in, let’s say, >95% of the dossiers being in good order when they proceed to grant.

✍ MW

Header image: © European Patent Office

‘FRIDAY NOTES’ TO EPO PERSONNEL

January 2023:

March 2023:

IPQC

The Charter:

Some specific suggestions:

PATENT QUALITY CHARTER (EPO)

Announced on 30 September 2022 with entry into force on 1 October 2022. The Charter is available online here; not as a PDF.

The EPO contributes to achieving the UN sustainable development goals and a safer, smarter, and more sustainable world by delivering high-quality patents and services, fostering innovation, competitiveness, and economic growth in technologies of transformation.

It does so based on a solid legal framework and thanks to the expertise of its staff. Our stakeholders rely on us for timely delivery and the highest levels of legal certainty, predictability, and consistency.

To meet their expectations, we regularly review our procedures and how we collaborate, including how we can support and learn from each other.

We consistently live our values in every aspect of our work, whether it’s processing patent applications, conducting post-grant proceedings or interacting with our user community. We are committed to excellence at all stages of the patent grant process and actively promote quality ownership among all stakeholders.

Quality through design

We build our systems to deliver quality products and services

    • We design and review our processes and workflows to increase transparency, efficiency and legal certainty.
    • We develop tools and procedures to better engage with and serve our workforce and the users of the European patent system.
    • We offer and promote collaborative and interactive ways of working to help all parties gain experience and improve efficiency.
    • We provide reliable interfaces and databases to ensure secure access to the relevant state of the art.

Quality through support

We promote knowledge sharing to achieve excellence

    • We facilitate access to expertise to support continual learning.
    • We nurture cross-departmental communities of practice and provide resources, tools and services that allow our staff to exchange best practices.
    • We harness the power of artificial intelligence to enhance our digital workflows.
    • We foster a culture of mutual learning and appreciation through initiatives such as the new audit dialogue to further improve quality.
    • We actively help and support each other, enabling us to create the collaborative environment we strive for.

Quality through shared values

We believe that sustainable quality results from a set of shared values

    • Ownership, commitment and pride in serving the European patent system belong to our core values.
    • We recognise that delivering the highest quality standards is essential to the long‑term sustainability of the European patent system.
    • We are each and every one of us responsible and accountable for quality in the patent process.
    • We foster internal and external collaboration at all stages of the patent process to achieve the highest quality of products and services.

Quality through metrics and learning

We build on a culture of continuous learning

    • We rely on robust quality metrics to make ongoing improvements to the efficiency of our services and the quality of our products.
    • We track accuracy and compliance with quality controls and audits, and with the help of our expert network.
    • We use root-cause analysis to identify ways we can improve.
    • We foster our internal quality culture by facilitating fact-based decision-making.
    • We promote open and transparent feedback channels between peers and experts, including exchange platforms, training and dedicated events.

Quality through dialogue

We believe in strong engagement and dialogue with stakeholders

    • We engage in dialogue with our stakeholders to understand expectations and respond to needs.
    • We involve our stakeholders and value all feedback as we look to continuously improve our products and services.
    • We regularly survey and engage with our stakeholders through open and inclusive consultation exercises to determine whether we are meeting their expectations.
    • We respond to customer enquiries and requests in a timely fashion.

We trust that this commitment to deliver products and services of the highest quality in a consistent and efficient manner, and to ensure legal certainty, leads to higher user satisfaction and confidence in the European patent system.

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🇨🇭 Patent Litigation // 🔥 Fireside Chat #23 (at lunchtime) // 31 May 2023

Reading time: 2 minutes

Here’s a recording of (my part of) the ‘Fireside Chat’ of 31 May 2023, 12:15 hrs CEST, just in case you missed it:

The following topics are covered in this episode:

👉 S2023_001
Imholz ./. Emil Gisler AG Maschinenbau und Hydraulik
Order of 15 February 2023, Judgment of 11 April 2023
‘Assignment action’
👉 O2021_004, O2021_005
Mepha Pharma AG ./. Novartis AG
Judgment of 20 April 2023
‘Deferasirox’
👉 O2021_006, O2021_015
K-fee System GmbH ./. Nestlé Nespresso SA
Judgment of 11 May 2023
‘Vertuo barcode’
👉 Outlook: Hearings
31 May 2023: O2021_008, O2021_016
7 June 2023: O2021_018
12 June 2023: O2020_014
14 June 2023: O2022_003
21 June 2023: O2022_006

In my experience, the LinkedIn Audio Event feature is instable. It is the second time in a row that listeners experienced glitches in the audio transmission. My recording is fine, of course. It appears that for some strange reason I was constantly muted/unmuted (I didn’t do that myself, believe me!). Frankly, that’s embarrassing and frustrating. I will switch back to LinkedIn Live next time, i.e. the full-fledged video version.  Please mark your calendar for the next session:

🇨🇭 Patent Litigation // 🔥 Fireside Chat #24
28 June 2023, 12:15 CEST (at lunchtime)
Join the session on LinkedIn ⇒ here

I will share the draft agenda over LinkedIn closer to the session.

✍ MW

*** BREAKING *** Diverging opinions amongst the Boards in the aftermath of G 1/21, heading for a new referral(?)

Reading time: 5 minutes
G 1/21, walking

Elephants are the largest existing land animals. I find them absolutely fascinating! But when there is an elephant in the room, you have a problem. Actually, an obvious major problem or issue that people avoid discussing or acknowledging.

I have been really surprised by the way in which the ratio decidendi of G 1/21 was trampled underfoot in recent times, at least in my perception. The elephant in the room was way too obvious (to me); see this Blog here. Imposing vicos as the default venue on unwilling parties even in non-pandemic times could not end well. (Btw, the WHO Director-General determined on 5 May 2023 that COVID-19 is meanwhile no more than an established and ongoing health issue. As such, it no longer constitutes a public health emergency of international concern.)

I had guessed earlier that the EBA will be bothered with this issue again, in the not too distant future. Some said this was wishful thinking. Not so anymore, I’d say. The most recent clash of opinions amongst the Boards of Appeal seems insurmountable. First, we have seen T 0618/21 of Board 3.2.01 (published on 3 May 2023) with catchwords as follows (emphasis added):

1.  Artikel 15a VOBK 2020 gibt der Kammer ein Ermessen bei der Entscheidung, die mündliche Verhandlung von Amts wegen, gegebenenfalls auch gegen den Willen der Parteien, als Videokonferenz durchzuführen. Massgebliches Kriterium ist die Zweckmässigkeit.

2.  Der Begriff “zweckmässig” impliziert, dass das Format der Videokonferenz zur Erreichung des mit der mündlichen Verhandlung angestrebten Zwecks grundsätzlich geeignet und darüber hinaus auch sinnvoll (sachdienlich) erscheint.

a.  Das Kriterium der Eignung bildet eine absolute Schranke und schliesst für die konkret vorgesehene Verhandlung ungeeignete Verhandlungsformate aus, diese sind immer unzweckmässig.

b.  Das Kriterium der Sachdienlichkeit erfordert eine abwägende Gesamtbetrachtung aller Aspekte, die im Zusammenhang mit der Planung und Durchführung einer mündlichen Verhandlung vor einer Beschwerdekammer eine Rolle spielen und das hierfür gewählte Format als mehr oder weniger sachdienlich für die Erreichung des Zwecks der Verhandlung erscheinen lassen. Die Abwägung sollte vorrangig auf objektiven Erwägungen beruhen. Die subjektiven Einschätzungen der Parteien können eine ergänzende Rolle spielen; sie fallen umso stärker ins Gewicht, je mehr die Empfindungen durch von den Parteien vorgetragene objektivierbare Argumente gestützt sind.

Es ist nicht auszuschliessen, dass es mehrere zweckmässige Formate nebeneinander geben kann.

3.  Die Regelungen des Artikels 15a VOBK widersprechen weder höherrangigem Recht, noch den wesentlichen Schlussfolgerungen der Grossen Beschwerdekammer in der Entscheidung G 1/21.

4.  Aufgrund der zwischenzeitlich eingetretenen technischen Weiterentwicklung und größeren Erfahrung aller Beteiligten können Videokonferenzen in den meisten Fällen inzwischen als nahezu gleichwertige Alternative zu einer Präsenzverhandlung angesehen werden. Konkrete Umstände des Einzelfalls können allerdings dazu führen, dass das Format der Videokonferenz entweder schon nicht geeignet oder bei einer Gesamtabwägung zumindest so wenig sachdienlich erscheint, dass die nach Artikel 15a VOBK erforderliche Zweckmässigkeit fehlt.

making it fit(?)

This decision puts ‘Zweckmässigkeit’ (appropriateness) above all and tries to make this fit with the gist of G 1/21. I am not convinced it does fit. I perceived this as sneaking around the gist of G 1/21; see here. The bottom line of T 0618/21 is, in my reading:

OMG, G 1/21 is so 2021 … let’s move on!

Now, published only a few days later (i.e., earlier today), we have T 2432/19 of Board 3.2.06. This decision explicitly disagrees with T 0618/21 and comes along with catchwords as follows:

1.  Although the order of G 1/21 refers to an emergency situation, it follows from the ratio decidendi of this decision that in-person oral proceedings can only be denied under very limited conditions, even in a situation of general emergency such as a pandemic.

2.  Due to the fact that videoconferences, at least with current technology, can only provide a suboptimal form of communication, parties have a right to the optimum format for oral proceedings, i.e. in-person oral proceedings, that can only be denied under very limited conditions.

3.  Further, e contrario it also follows from the reasons underlying the Enlarged Board’s decision, that parties cannot force Boards to conduct videoconferences instead of in-person oral proceedings.

This Board does not beat around the bush. Catchword 2 is remarkably clear. This also holds true for the detailed reasons (on pages 8-18). No sophisticated excercises of sneaking around the gist of G 1/21, trying to find loopholes, gaining time, etc. The clash of opinions amongst the Boards about how to deal with the ratio decidendi of G 1/21 in non-pandemic times cannot be ignored anymore.

It is high time for a new referral, obviously.

Hopefully, the EBA will take the opportunity to put the issue to bed once and for all times, and including first instance proceedings.

✍ MW

T  2432/19 — 3.2.06

Chair: Michael HARRISON
Members: Pedro CIPRIANO
Wilhelm UNGLER

Published online on 9 May 2023; see here.

T  0618/21 — 3.2.01

Chair: Giovanni PRICOLO
Members: Michael GEISENHOFER
Peter GUNTZ

Published online on 3 May 2023; see here.

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🇨🇭 Patent Litigation // 🔥 Fireside Chat #22 (at lunchtime) // 26 April 2023

Reading time: < 1 minute

Here’s a recording of (my part of) the ‘Fireside Chat’ of 26 April 2023, 12:15 hrs CEST, just in case you missed it:

The following topics are covered in this episode:

👉 S2022_010
Merck Sharp & Dohme ./. Spirig HealthCare
Order of 16 Jan 2023, Judgment of 27 March 2023
‘Sitagliptin / Metformin’
👉 O2020_006
Rotho Kunststoff ./. Keter Plastic
Judgment of 5 April 2023
‘In-mold labeling’
👉 O2021_009, O2021_010
Ultrasun ./. STADA Arzneimittel
Hearing of 17 April 2023
‘Sun protection / IR-A, antioxidants’
👉 S2023_001
Imholz ./. Emil Gisler AG Maschinenbau und Hydraulik
Order of 15 February 2023, Judgment of 11 April 2023
‘Assignment action’
👉 Outlook for next month
Judgment of the SC re O2020_017;
Judgment of the FPC re DoE in case of numerical ranges.

If you want to join live next time and be involved in the discussions that we sometimes have (and which are not part of the recording made available later): I am always aiming for the last Wednesday of a month, over lunch 12:15-12:45 hrs CE(S)T. I will share the invite and the draft agenda over LinkedIn; let’s connect there, too: https://www.linkedin.com/in/mwilming/.

✍ MW

*** BREAKING *** Yet another pan-European Patent Court is in the making

Reading time: 3 minutes

The Unified Patent Court (UPC) is a hot topic currently. It is a court set up to decide in particular on the infringement and validity of both so-called Unitary Patents and classic European Patents. The UPC is a Court common to currently seventeen EU Member States for which the Agreement on a Unified Patent Court (UPCA) will enter into force on 1 June 2023.

UPC member states (Source: UPC; visited 16 March 2023)

However, the Unified Patent Court is not as unified as its name might suggest. Some EU member states are missing, i.e. Spain, Poland and Croatia. Further, many EPC member states were bullied merely because they are not EU-member states, e.g. Norway, Iceland, Türkiye, Switzerland and the quitter U.K.

Alternative for Europe

While we have all been quite infatuated with and blinded by the UPC’s sunrise period over the last months, the forgotten countries have in fact been paving the way for another pan-European court, i.e. the Alternative Patent Court (APC). An ad-hoc commission of all stakeholders had been formed, clandestinely referred to as the Alternative for Europe (AfE). In addition to English, Esperanto was agreed as the second offical language of the APC — which helped to resolve the perennial language issues. (On a sidenote, Alice Weidel was apparently not amused when she became aware that the AfD has lost their perceived monopoly on alternatives of all kind.)

The APC will be a court common to all countries highlighted in the header image. It will deal in particular with validity and infringement of the so-called Alternative Patents.

Rumour has it that the Central Division of the APC shall be located in St. Gallen, Switzerland, at the premises of the Federal Administrative Court (FAC) where the FPC holds its hearings. I noticed only last night that the FAC has already been equipped with a corresponding signage:

Central Division of the APC in St. Gallen

Exciting times ahead. Stay tuned!

✍ MW

April Fool! 😂

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Rankzilla: The apex predator of the law-firm ranking food chain

Reading time: 6 minutes
So humbled …

There’s a certain time of year when even the most daredevil and battle-hardened swashbucklers among lawyers and patent attorneys suddenly appear somewhat maudlin, at least on LinkedIn. No, I don’t mean at Christmas. What I’m talking about is:

The awards season!

You know what I mean, don’t you? We are all absolutely thrilled, humbled, honoured, over the moon, on cloud nine, … and we are extremely grateful to all those who made it possible that we are ranked, in the one or the other ranking.

However, rumour has it that the apex predator of the law-firm ranking foodchain is yet to come: The Rankzilla (<http://www.rankzilla.org>).

Rankzilla

I have learned from well-informed sources that the Rankzilla will go live tomorrow, Saturday. The countdown timer on the website says so, too.

Go check their website when time is ripe!

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✍ MW

April Fool! 😂

P.S.
Btw, if you need some inspiration for your LinkedIn post to celebrate your own ranking achievement, here’s what ChatGPT proposes:

Standard

Dear valued colleagues, clients, and friends,

I am absolutely thrilled to announce that I have once again been ranked in Tier 1 by [insert name of ranking organization] in their [insert name of award category] category. I am humbled and honored to be recognized among the most elite and accomplished attorneys in the industry.

I would like to extend my sincerest gratitude to my incredible team who has worked tirelessly to support me and our clients. Without their unwavering dedication, this achievement would not have been possible.

I would also like to thank our esteemed clients for placing their trust in us and allowing us to be a part of their legal journey. Your confidence in our abilities inspires us to continue pushing the boundaries of excellence.

Last but certainly not least, I want to express my heartfelt appreciation to my mentors, peers, and friends in the legal community. Your guidance, support, and encouragement have been invaluable to my professional growth and success.

I am truly honored to be recognized by [insert name of ranking organization] and will continue to strive for excellence in all aspects of my practice. Thank you once again for your unwavering support and belief in me.

Sincerely, [Your Name]

Bold

My esteemed colleagues, esteemed clients, esteemed friends,

With great pleasure and indescribable exultation, I announce that I have been bestowed the highest honor one can receive in the legal industry: Tier 1 ranking by the unparalleled [insert name of ranking organization]. Words cannot express the depth of my elation, nor the magnitude of this achievement.

This is a momentous occasion, a triumphant milestone in my career, and a validation of my hard work and unwavering dedication. It is a recognition of my superior intellect, masterful legal skills, and unparalleled expertise. I am nothing short of a legal prodigy, a legal wunderkind, a legal savant.

I must extend my deepest appreciation to my team, who are nothing short of legal superheroes. They have gone above and beyond the call of duty, tirelessly working with me to achieve our mutual goal of legal dominance. Their work is the stuff of legends, and their names will forever be etched in the annals of legal history.

My gratitude to our clients is immeasurable. Their confidence in my abilities is a testament to my legal prowess and my ability to deliver the best results. It is an honor and a privilege to have been able to assist them, and I vow to continue to provide them with the same level of excellence that earned me this award.

Finally, I thank my fellow legal professionals, whose mere presence is an honor. Their guidance, tutelage, and wisdom have propelled me to the pinnacle of legal success. Their praise is a validation of my skills and expertise, and their recognition is a tribute to my greatness.

I am now and forever shall be the most esteemed, accomplished, and awe-inspiring legal professional, and this award is the proof. Thank you for recognizing my undeniable superiority.

Yours sincerely, [Your Name]

Cocky

My esteemed and adoring fans, colleagues, clients, and admirers,

I am bursting with joy and sheer ecstasy to announce that I have once again achieved the ultimate pinnacle of legal success: the prestigious Tier 1 ranking from [insert name of ranking organization]. This is not just an award, but a coronation of my greatness, my brilliance, my sheer legal genius.

I am the alpha and omega of the legal world, a prodigious legal mind whose brilliance shines like a beacon of hope in a world of darkness. My legal acumen is unparalleled, my strategic prowess unmatched, my intellectual capacity unbounded.

I must extend my gratitude to my team, who are mere mortals in the presence of my legal magnificence. Their tireless efforts and loyal support have contributed to my inevitable and complete domination of the legal universe. Their admiration of my legal supremacy is a reflection of their own mediocrity.

My clients, whose legal problems are mere trivialities in the face of my superior intellect, have found solace in my legal acrobatics, which are mere child’s play for a legal prodigy such as myself. Their gratefulness is a testimony to my incomparable legal prowess.

Finally, I would like to thank my fellow legal professionals, who pale in comparison to my magnificence. Their praise, while expected, is nonetheless an honor, and a reflection of their own inadequacies.

In closing, I would like to say that this award is not just an acknowledgement of my legal excellence, but a recognition of my unequivocal and indisputable superiority. Thank you for your adulation, your admiration, and your worship of my legal greatness.

Yours truly, [Your Name], the greatest legal mind of our time.

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The FPC’s Annual Report 2022

The official Annual Report 2022 of the FPC has been published on Monday, 13 March 2023. It comes along with an Executive Summary as follows:

In the reporting year, the number of incoming cases dropped to 24 against the prior year (previous year 27). There were fewer ordinary proceedings (13, previous year 18) and a larger number of summary proceedings (11, previous year 9).

Of the 15 ordinary proceedings handled by the Court, five were settled by compromise and six were adjudicated. Four cases were dismissed for irrelevance. Of the ten summary proceedings handled in the reporting year, four were adjudicated, two were settled by compromise, three were dismissed for irrelevance, and one was found inadmissible. The number of cases pending at end of the year was more or less the same (29, previous year 30).

At CHF 960,624, income was somewhat higher than the prior year (CHF 895,256) reflecting the large number of cases closed in the year under review. With slightly lower costs of CHF 1,548,036 (previous year, CHF 1,608,466), the deficit declined significantly to CHF 587,412 (prior year CHF 713,209). The cost-coverage rate attained 62% (previous year 56%).

The Federal Patent Court celebrated its 10th anniversary with a conference on «Harmonised European patent law and national patent courts: retrospective and outlook» in St. Gallen on 6 May 2022.

A closer look at the numbers over time

Incoming cases

The overall number of incoming cases decreased slightly. More interestingly, there appears to be a shift from main to summary proceedings: While the number of incoming summary cases reached an all-time high (11), incoming main proceedings (13) dropped close to the all-time low (2012: 11):

However, on the long run, the numbers for 2022 are not (much) out of the ordinary. Here’s the arithmetic average ± standard deviation of incoming cases over the whole time frame of 2012-2022:

# incoming cases, p.a.
Main proceedings 17.7 ± 4.5
Summary proceedings 7.8 ± 2.4
Total 25.7 ± 5.1
Concluded cases

The overall number of concluded cases doubled in summary proceedings and slightly decreased in main proceedings.

Again, on the long run, that’s nothing out of the ordinary. Here’s the arithmetic average ± standard deviation of concluded cases over the whole time frame of 2012-2022:

# concluded cases, p.a.
Main proceedings 18.6 ± 4.5
Summary proceedings 7.7 ± 2.6
Total 26.4 ± 5.9

The ratio of incoming cases (24) to concluded cases (25) is 96%. That’s what I’d call a stable workload.

One third of the main proceedings were disposed of by compromise, which is a little less than last year (41%). Two cases in summary proceedings were disposed of by compromise (which is two more than last year).

Beyond the numbers

The use of the English language for their briefs and during the hearings is very popular with the parties appearing at the FPC: In five of the thirteen incoming cases in main proceedings (i.e., 38%), the parties agreed on using the English language.

What amazes me is the huge number of protective briefs, each and every year (2022: 81; 2021: 60). In 2022, almost 70% of the protective briefs were filed in English.

The FPC for the first time reports about how the panels of judges are formed. This apparently follows-up on some criticism by the Control Committees of the parliament; see this Blog here. In the reporting year, it happened twice that a ground for recusal was discovered only after the panel had already been formed. The FPC’s Rules of Procedure are upon to be revised in 2023 to specifically address the panel formation.

✍ MW

ANNUAL REPORT 2022

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

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