[…] public non-commercial use (compulsory) licence on patents related to the breast cancer medicine pertuzumab sold by Roche under the brand name Perjeta®.
Perjeta® is approved in combination with Herceptin and chemotherapy for the neoadjuvant (pre-surgery) treatment of people with HER2-positive, locally advanced, inflammatory, or early stage breast cancer and as a first-line treatment of advanced HER2-positive breast cancer.
Well, I have my doubts that this request will actually find its way to the FPC. But even if it did, I frankly do not see how the FPC could allow it.
Art. 40 PatA regulates licenses in the interest of the public, as follows:
Where public interest so dictates, the person to whom the proprietor of the patent has, without sufficient reason, refused to grant the licence requested, may apply to the court for the grant of a licence to use the invention.
I have no reason to assume that the Federal Council had ever requested a license from Roche. Thus, Public Eye relies on Art. 40e(1) PatA, which holds (emphasis added):
The licences […] are granted only if efforts by the applicant to obtain a contractual licence on appropriate market terms within a reasonable period of time have been unsuccessful; […]. Such efforts are not required […] in cases of public non-commercial use.
Frankly, I cannot see how such public non-commercial use of a biosimilar to Perjeta® should work. The Federal Council itself would surely not start production and marketing of biosimilars. The draft request is vague about the actual licensee. In fact, Public Eye suggests in ¶3.3.2 that the Federal Council would
[…] rely on an established third-party manufacturer, with recognised production capacities and which applies proven quality compliance mechanisms, to manufacture and deliver the biosimilar product in Switzerland.
Further, Public Eye notes that
[…] grant of a compulsory license in Switzerland would induce them to accelerate the development of a pertuzumab biosimilar.
That may well be the case. But any such third-party manufacturer would need to somehow be covered by the compulsory license. Maybe, as a sub-licensee of the Federal Council, or under a ‘have-made’ right of the Federal Council? But even then, I do not readily see how the obviously commercial conduct of such a third-party manufacturer could be interpreted as public non-commercial use referred to in Art. 40e(1) PatA. To me, this has the notion of an attempt to circumvent the requirement that the law imposes on normal market player to at least attempt to negotiate a license.
But still, compulsory licenses are a hot topic in recent times. The Raltegravir / Isentress® case in Germany is a prime example. With decision X ZB 2/17 of 11 July 2017, the German Federal Supreme Court had approved the grant of a compulsory license in the interest of the public — after unsuccessful efforts to obtain a license. That’s the key difference, in my perception.
The Swiss trademark application no. 63209/2015 had been rejected by the IPI already back in December 2016. The rejection had been upheld by the FAC with decision of 30 July 2018, and the Supreme Court now finally approved the rejection with decision of 3 January 2018. This is the logo for which protection had been sought for:
Frankly, the decision is not out of the ordinary, from a Swiss perspective. What surprised me, however, is that the very same abbreviation had been trademarked all around the world, in many variations; see the Global Brand Database.
Other offices apparently take a less strict approach.
Apple surely is one of the most iconic brands. The look and feel of Apple is still pretty unique, in my perception. But every successful brand is challenged once in a while, and this is very likely not the first time that Apple intervenes against others using or claiming ‘their’ bite in something.
Still, this is a special one. Apple lodged a trademark opposition based on its older trademarks CH P-502’206 (which is the iconic apple with a bite); and CH 640’382 (which apparently is only the leaf thereof):
The trademark in dispute was the Swiss part of IR 1’292’997 that incorporates some elements of Apple’s trademarks:
Still, Apple’s attempt to get the trademark canceled had been unsuccessful in first instance at the IPI (order of 24 January 2017; unpublished). Apple appealed — and lost again at the FAC; decision of 10 January 2019.
In a nutshell, the FAC held that despite some visual similarities of the trademarks, there was no likelihood of confusion. First, the characteristic feature of the CH’206 trademark, i.e. the apple, is not found in the trademark in dispute. And second, even though CH’382 is identically featured as a minor part of the trademark in dispute, its overall visual appearance is different; the FAC held that the leaf is only a trivial symbol, and its distinctiveness is low.
Noteworthy, the defendant did not participate by any means in the proceedings, neither in writing nor at the hearing.
The present trademark dispute was not the first clash of the parties. The trademark owner and his brother founded a company in Italy that is named after Apple’s godfather Steve JOBS† who sadly passed away in 2011 at the age of only 56: The name of the company is Steve Jobs Inc. (no kidding!).
What likely had raised even more concern in Cupertino than the mere logo and the name of the company was the registration of the logo combined with the name ‘Steve Jobs’ as an EU trademark (No. 011041861).
Apple’s opposition against the stylized trademark had been rejected by an opposition division of the EUIPO already in 2014.
And, even worse: The brothers also got an EU trademark with just the words ‘Steve Jobs’ registered (No. 011687316). I could hardly believe it, but it seems to be true: Apple never applied for a trademark ‘Steve Jobs’. The plain ‘Steve Jobs’ trademark remained unapposed.
Steve Jobs Inc. apparently started with fashion. With jeans! I cannot recall a single keynote given by Steve JOBS† without his jeans …
Steve Jobs Inc. seemingly envisages to step onto Apple’s home turf with electronics and smartphones; see this report in ‘The Telegraph’ of 29 December 2017.
I cannot help but wonder whether we will see additional action taken by Apple against Steve Jobs Inc.
Richemont’s trademark application 58809/2016, a stylised fish, for watches etc. in class 14 had been rejected. The IPI held that the sign was of religious content, and its commercial use would offend the religious feelings of an average member of Christianity. The rejection was based on Art. 2 lit. d TmPA, i.e. the sign was held to be contrary to morality.
Still, there are differences: The comparatively large caudal fin, in relation to the body; and the fin is closed in Richemont’s version, but open in the Ichthys symbol. However, both the IPI and the FAC held that these differences do not alter the overall impression of the sign which is still perceived as an Ichthys symbol; ¶4.5.
Next, the FAC had to assess whether the use of the sign as a trademark was likely to offend the religious feelings of an average member of Christianity.
Prior case-law had rejected trademark applications when they concerned figures who occupy a central position in the respective religions; e.g., the FAC had confirmed the IPI’s rejection of the trademark ‘Madonna (fig.)’, IR 855’013, with decision B-2419/2008 of 12 April 2010, and the Supreme Court again confirmed this assessment; 136 III 474, decision of 22 September 2010.
The FAC reiterated again from its prior ‘Madonna (fig.)’ decision that the position of the religious figure in the respective belief system must be examined. The mere fact that the Madonna was not part of the Trinity did not exlude immorality. The intense veneration of the Madonna, which clearly goes beyond the veneration of certain saints, suggests a central role for the majority of Christians belonging to the Catholic Church. It followed that, under certain circumstances, the commercial use of signs which are not directly central to a religious community may still be considered immoral. On the other hand, not every use of a sign that has a religious meaning is automatically immoral. Rather, the disputed sign must play a central role in the religious community in question. The sign must have an important religious meaning and the commercialization of the sign must be likely to violate religious feelings of the member of this religion and endangering social peace, for it to be excluded as immoral.
Now, is the stylised fish really a central symbol of Christianity, as the IPI had argued?
The FAC held that this is not the case. In comparison with the signs previously regarded as immoral because of the violation of religious feelings, the disputed mark has no important religious meaning; ¶5.4.
Im Vergleich mit den bisher wegen Verletzung des religiösen Empfindens als sittenwidrig erachteten Zeichen kommt der strittigen Marke […] kein wichtiger religiöser Sinngehalt zu.
The FAC noted that the fish symbol surely had an essential meaning in early Christianity, but it already existed in very different forms at that time. The symbol, consisting of two curved lines, then essentially got forgotten for almost two millennia. It was not until the 1970s that it was rediscovered in its present form. As a symbol for Jesus, however, the sign is rather secondary. The central sign of Christianity is and remains the cross (see ‘Das Kreuz mit dem Fisch‘, referred to in the decision).
Although the Ichthys symbol is relatively widespread, its religious significance for Christianity is not on the same level as the Trinity (Father, Son and Holy Spirit) or the Cross symbol. The meaning of the sign is also not comparable with the value of the Mother of Jesus (Madonna), who is intensely venerated, which is why she also has a central role. The Ichthys symbol does not play such a central role. The symbol is not used by name in religious rites, is neither venerated nor worshiped.
The meaning of the fish symbol thus shares the fate of numerous other Christian signs which have religious connotations, but which do not play a central role in the religious community or in religious symbolism, such as the signs Alpha and Omega, Anchor, Dove, Water, etc. (see e.g. ‘Symbole des Christentums‘ (Wikipedia) and ‘Christliche Symbole‘, both referred to in the decision).
Accordingly, the FAC held that it cannot reasonably be assumed that the commercialization of the Richemont fish is likely to violate the religious feelings of the average member of Christianity, in particular since extreme sensitivities are not taken into account (see 136 III 474, ¶4.2). Further, the FAC noted that there are numerous previous registrations of marks which clearly identify the disputed Ichthys symbol, and similar signs have been used in commerce for a long time without any apparent violation of religious sensibilities.
As always, I cannot help but wonder about the background of the matter: What’s the purpose of Richemont’s fish?
Frankly, I don’t know.
But what comes to my mind is that IWC (a Richemont brand) formerly used a fish on the crown to indicate that the watch was water-resistant.
See the fish symbol on the crown of an IWC Big Pilot Ref. 5002 ‘Transitional’ here. In more recent times, IWC used their ‘Probus Scafusia’ logo on the crowns.
Nothing is currently surfacing at the FPC. So I dissected yet another trademark case over the holidays, this time from the Supreme Court.
To put this case in context, it is helpful to know that WILD Heerbrugg was a Swiss company established in 1921 that produced high quality optical instruments; see the Virtual Archive of WILD Heerbrugg for further information. The company merged with Ernst Leitz Wetzlar GmbH in 1986 to form the WILD Leitz Group.
When Leica Holding B.V. was established in 1990, the name ‘WILD’ disappeared. After Leica Camera was spun off in 1996, the remaining group split into Leica Geosystems and Leica Microsystems in 1997.
But the name ‘WILD’ did not disappear completely; it still lives on: The former Austrian production site of WILD Heerbrugg was transformed into the WILD group of companies.
The old trademark ‘WILD Heerbrugg’ and some related signs had been abandoned by the aforementioned companies. However, the plaintiff in the present matter apparently got interested in them later — and troubled both Leica and the WILD Group.
I could not spot any connection between the plaintiff and the former Wild Heerbrugg company, neither in the judgment nor by my own research. The defendant countersued for nullity of Mr Oelmayer’s trademark and argued that it was an abusive registration.
Note that this ground of nullity is not codified in the TmPA. But according to established case law of the Supreme Court, no protection can be claimed for registered trademarks if they have not been filed for the purpose of use, but with the intention of preventing the registration of corresponding signs by third parties, of increasing the scope of protection of actually used trademarks (127 III 160, ¶1a) or of obtaining financial or other advantages from the previous user (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.4). The absence of an intention to use entails the invalidity of the registered trademark (127 III 160, ¶1a; 4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5). The inadmissibility of such trademarks registered without the intention to use them and thus of misuse constitutes, in addition to the non-inclusion of use (Art. 12(1) TmPA), an independent fact for the loss of the trademark right, and the respective owner of the trademark cannot invoke the grace period for use (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5).
And, indeed, the Commercial Court Berne held on the basis of various circumstances that Mr Oelmayer filed the trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 624 864) — as well as an earlier stylised trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 567 937) which was not the subject of the dispute — without the intention to actually use it, but with the intention to attack existing trademarks and to demand money for the settlement of trademark disputes. By registering the word trademark ‘WILD HEERBRUGG’, the applicant sought, in disputes with Leica Geosystems AG, Leica Microsystems Holdings GmbH and with WILD Elektronik und Kunststoff GmbH & Co KG, to counter the objection that the grace period for the use of the earlier stylised trademark ‘WILD HEERBRUGG’ (CH’937) had expired. The Commercial Court therefore held that the filing of the trademark ‘WILD HEERBRUGG’ (CH’864) was abusive. Defendant’s counterclaim for invalidity of Mr Oelmayer’s trademark was thus approved. All costs were clapped on the plaintiff, in view of the abuse.
Plaintiff’s initial claim had been written off because it had become devoid of purpose: Defendant’s Swiss designation of the international trademark had not been renewed in 2014. In my understanding, this happened by accident. The defendant later applied for a Swiss national trademark; see Swissreg, CH 675 230.
Opposition proceedings between the same parties are currently pending at the IPI.
Now, how does a court determine the lack of an intention to actually use a trademark?
In general terms, the person who derives rights from it must prove a fact (Art. 8 CC); thus, the party who invokes this ground for invalidity (cf. 127 III 160, ¶1a) bears the burden of proof for the lack of intention to use. However, the lack of intention to use is a negative and, moreover, an internal fact which can hardly be proven positively. The Supreme Court therefore assumed with the doctrine that, within the framework of the duty to cooperate, the opposing party may be required to document or at least claim the reasons why the registration of the trademark forms part of a fair trademark strategy, despite the inconsistencies which the plaintiff had pointed to. If this explanation appears to the judge to be untrustworthy, the abstract proof must suffice for the typically defensive constellation within the overall assessment (4A_429/2011, ¶5.1 with reference to EUGEN MARBACH, Markenrecht, SIWR Bd. III/1, 2nd ed. 2009, ¶1446).
Mr Oelmayer lodged an appeal to the Supreme Court, but failed.
The Supreme Court held that the Commercial Court had established the facts well in accordance with the law, and parties cannot allege facts beyond that; Art. 105 (1) FCA. If, for example, the appellant submitted to the Supreme Court that he had documented acts of use (preparation) and thus emphasised his abstract will to use by preparing a business plan two years before filing the application, submitting a license agreement concluded in 2014, applying for several patents (which I could not spot in [email protected]), seeking financing possibilities and presenting the “surgical microscope” project, he only criticised in an inadmissible manner the assessment of evidence in the first instance. By asserting that the 2014 license agreement had at least implicitly existed since the trademark had been filed, because it had been intended from the outset to license or transfer the trademark to the company to be established, he departs from the findings of fact in the contested decision without raising a sufficient complaint in this respect. Further, the Supreme Court held that the appellant did not raise any admissible objection in connection with the determination of the Commercial Court that the procedural conduct of the appellant indicated that his evidence of intention to use had either only been alleged or had only been produced with a view to the pending proceedings. The same applies to the findings in the contested decision, according to which his actions with regard to the trademark registrations indicate the intention to be bought out of the way by the parties concerned or according to which there are concrete indications that the appellant was seeking to negotiate financial advantages.
The Supreme Court thus dismissed the appeal; the judgment is now final.
Reported by Martin WILMING
1 The decision is partially anonymised, but the name Oelmayer is still mentioned in plain language (¶A.h). Anyway, the parties are most easily identifiable with Swissreg based on the trademarks at stake. Since Thomas Oelmayer is a public person (see Wikipedia), I chose to not beat around the bush, in accordance with the Codex of this Blog — take me back ↺
Glycine had been distributing and promoting its watches under its old label already for quite a long time, and the old logo had not been objected to by Armani. But Armani felt uncomfortable with Glycine’s new logo that had been introduced in 2015. It is the design of the crown that had been changed: The crown seemingly got wings … — or is it an eagle?
Glycine had sought trademark protection for both the old and the new logo, as follows:
Armani considered that Glycine’s new logo would create a likelihood of confusion with its own brand. After having sent warning letters to Invicta Watch Company of America, Inc. (the American parent company of Glycine Watch SA) and also directly to Glycine Watch SA, Armani finally brought an action before the Commercial Court Berne. Armani requested that Glycine Watch SA be ordered to abstain from using the stylised ‘wing crown’ logo and the word ‘AIRMAN’, based on both its earlier trademark rights and the Swiss Act against Unfair Competition (UCA).
The Commercial Court Berne indeed forbid the use of the logo
with and w/o the additional word ‘AIRMAN’. An appeal is currently pending at the Supreme Court.
It is always interesting to compare decisions of different courts and offices. Armani had also filed an opposition against the corresponding European Union trademark no. 015910301 with the EUIPO, based on its older trademark no. 015743891.
The EUIPO rejected Armani’s opposition (case no. B 2 832 882); see the decision here. An appeal is currently still pending.
While the case before the EUIPO was an opposition and the one before the Commercial Court Berne was a trademark infringement case, both had to assess similar issues. The Commercial Court Berne took notice of the EUIPO’s earlier decision (¶34.3.5), but did not agree in respect of the similarity of the signs and the degree of brand awareness.
The Opposition Division of the EUIPO had concluded that insufficient evidence had been submitted to support the assumption of a well-known mark. Consequently, it considered the distinctiveness of Armani’s mark as just normal. As to the similarity of the signs, the EUIPO held (¶e, fourth paragraph) that
[…] the distinctive verbal element ‘GLYCINE’ is of primary importance and the figurative element is of less impact. […], the presence of the term ‘GLYCINE’, on goods bearing the contested mark, in conjunction with a markedly different bird device is sufficient to avoid confusion.
In striking contrast, the Commercial Court Berne concluded that the plaintiff’s trademarks were indeed well-known trademarks, with an extended scope also for watches (¶31.3.3):
The Court considers the reputation of the applicant’s marks […] for fashion to be notorious. […] Furthermore, the Court assumes that the resulting extended scope of protection must also be affirmed for watches, as very common fashion accessories.
The Commercial Court Berne neither agreed with the EUIPO’s assessment of similiarity of the signs, but rather applied the regular principle that even the addition of an entirely different word element does not alter the similarity of the signs in the case of an identical or only slightly altered adoption of the dominant figurative element; ¶¶34.2.2, 34.3.4.
Despite the size of the word element, the figurative element is better remembered in this case because, due to its visual similarity, it evokes a reflexive association with the plaintiff’s well-known eagle marks and is thus characteristic of the overall impression.
It will be interesting to follow the further course of the proceedings at the appeal stage, both at the Swiss Supreme Court and the EUIPO.
No patent matter this time, but rather a trademark case with a very Swiss touch.
The Swiss Post filed the trademark application 61979/2010 ‘POSTAUTO’ already back in November 2010; see Swissreg. After the original application had been split up and a first trademark had been allowed to proceed to grant with a relatively wide scope covering inter alia transportation of goods and persons and operation of buses according to timetables in class 39 (CH 674’035; see Swissreg), the IPI maintained its objection with respect to some further goods and services and refused the remaining application on 31 December 2015. The IPI held that the sign ‘POSTAUTO’ was purely descriptive for these goods and services, and that it was not credible that the sign had gained distinctiveness through use. The following list of goods and services was at stake:
Magnetic or optical data carriers.
Toys, especially Postbus models.
Storage and packaging of goods; travel arrangements; planning (transport logistics) of transport solutions for passengers and goods; arranging transport services; renting vehicles; operating vehicles on a joint basis (car-sharing, carpooling); consultancy services for all the above services.
Services related to education and training, in particular in the field of transport, the carriage of persons, goods and goods.
It is not overly bold to assume that almost every child is well aware of the sign ‘POSTAUTO’ in Switzerland …
And it’s been like that for quite a while …
In first place, the FAC confirmed the IPI’s finding that ‘POSTAUTO’ is not a distinctive sign per se. Rather, ‘POSTAUTO’ is perceived plainly descriptive for a postal car or postal bus.
As an auxiliary measure, Swiss Post had requested that the sign be registered because it had become a trademark through use; Art. 2 lit. aTmPA.
Now, this is where it’s getting interesting: The IPI even refused this auxiliary request.
But the FAC did not agree for the majority of goods and services, in very clear terms; see ¶7.3. The FAC held that the IPI erred in law when it did not examine the reputation of the sign, in addition to just assessing the evidence of use that had been submitted.
So hat die Vorinstanz es rechtsfehlerhaft unterlassen, neben der Beurteilung der Gebrauchsbeilagen die Bekanntheit des hinterlegten Zeichens zu prüfen.
The FAC further held that the Swiss Post should have benefited from the fact that, throughout Switzerland, the sign has acquired the significance of a keyword-like reference to the public transport services offered by the Swiss Post for decades throughout the entire Swiss settlement area, as well as to related services. The evidence of use must be assessed in the light of the reputation of the sign at stake, based on decades of intensive use throughout Switzerland. In its assessment to the contrary, the IPI failed to include in the required overall assessment the circumstances which were relevant for the acquired distinctiveness through use.
The FAC held that it is known to the court that the sign ‘POSTAUTO’ has been in use as a trademark since long ago for goods in classes 9 and 16; see ¶7.6:
Dass das hinterlegte Zeichen im Zusammenhang mit den Waren der Klassen 9 und 16 aufgrund des schweizweiten Streckennetzes bereits seit Jahren markenmässig verwendet wird, ist gerichtsnotorisch.
The FAC further held that the IPI fundamentally overlooked the fact that its requirement of proof of ten years’ use of a sign is not sacrosanct.
Die Vorinstanz übersieht sodann grundlegend, dass ihre Beweiserleichterung eines zehnjährigen Markengebrauchs nicht dazu dienen soll, die Wahrnehmung des Marktes jener zehn Jahre absolut zu stellen (vgl. Urteil des BVGer B-6363/2014 vom 8. Juli 2016 E. 8.3 “Meissen”).
If a sign has been successfully marketed for decades, only a few declaratory pieces of evidence of the last ten years are well sufficient. In the case at hand, the very long use of the sign and its excellent market position mean that there is no need for specific evidence from French- and Italian-speaking parts of Switzerland, where sufficient dissemination and recognition can simply be deduced from the excellent reputation of the appellant over decades and its uninterrupted market presence to this day; see ¶7.6.
In sum, the FAC only denied acquired distinctiveness of the sign ‘POSTAUTO’ for class 12 (vehicles) and, partially, class 39 (operating vehicles on a joint basis (car-sharing, carpooling)). The final list of goods and services thus reads as follows:
Magnetic or optical data carriers.
Toys, especially Postbus models.
Storage and packaging of goods; travel arrangements; planning (transport logistics) of transport solutions for passengers and goods; arranging transport services; renting vehicles; operating vehicles on a joint basis (car-sharing, carpooling); consultancy services for all the above services.
Services related to education and training, in particular in the field of transport, the carriage of persons, items and goods.
Frankly, the decision is not much of a surprise on a substantive level, in my perception. But why does it take eight years and two instances to get there?
that has been filed already back in early 2011 with the Southern District Court of Texas (Houston Division); case 4:11-CV-695, see the plaintiff’s press release here. The docket is huge. But what is most remarkable is an order that has been entered on December 12, 2018, as follows (emphasis in original!):
The Court is in receipt of the parties’ whiny letters. What is wrong with you parties/lawyers? Just STOP IT! […]
There will be no extension granted on the motion deadline — DON’T ASK.
This is my oldest and least favorite case. Please stop trying to become my least favorite lawyers.
Anybody ever said that court files are boring? Not so when your judge is Vanessa D. Gilmore.
Her order concludes with Happy Holidays, and so does this post … 😉
P.S.: The judge is also an author. Maybe, some background of the case in general and/or the order in particular will be covered in the next edition of her book:
Aiming high now: Maybe not only in prosecution, but even in litigation therafter!
We are surely not yet there.
For instance, the German Federal Court of Justice (FCJ) has some reservations, as discussed by judge Klaus GRABINSKI here:
The [EPO] Guidelines stipulate that deviation from this strictly schematic approach should be exceptional. The approach serves the interests of objective and predictable assessment in the examination procedure, in which, under Article 18(2) EPC, only the applicant and one member of the examining division are normally involved. Its appropriateness in this context is not to be questioned here; however, for a court procedure conducted on an adversarial basis between two or more plaintiffs and defendants, its suitability is limited.
But what are these reservations?
Firstly, the choice of a (single) closest prior art as the starting point in the assessment of obviousness, in GRABINSKI’s view:
Experience shows that, in nullity proceedings, the plaintiff generally presents several starting points (documents, public prior uses, etc.) in respect of inventive step. The court then has to assess whether the skilled person would actually have selected these starting points. According to the case law of the German FCJ, the choice of a specific starting point for the consideration of inventive step requires particular justification. This can be derived from the skilled person’s endeavour to find, for a specific purpose, a solution better than or different from the solution provided in the prior art. The test can be applied with one or more starting points (documents, public prior uses, etc.). There is no reason to limit the assessment of inventive step from the outset to the “closest prior art”. Otherwise, there is the risk of an inadmissible ex post evaluation of the prior art with regard to what is “closest”.
However, GRABINSKI holds that the EPO’s approach essentially does not differ much (what I believe is true, and I will come back to this in the below):
Ultimately, the same view would appear to prevail in the [then] current Guidelines for Examination. The authors concede, with reference to several decisions of the boards of appeal, that in some cases there are several equally valid starting points for the assessment of inventive step and that, in the event of refusal, it is sufficient to show, on the basis of relevant prior art in respect of at least one solution, that the claimed subject-matter lacks an inventive step. In such a situation, there is no need to discuss which document is “closest” to the invention; the only relevant question is whether the document used is a feasible starting point for assessing inventive step.
The formulation of the objective technical problem is key in the EPO’s problem-solution approach. Admittedly, this involves a somewhat artificial, retrospective approach. But it does so by design and in the interest of legal certainty, for that it be a reliable tool with predictable results. In my perception, the German FCJ takes a somewhat different approach; the problem(s) it typically refers to is/are not the objective technical problem of the problem-solution approach— at least not necessarily; see e.g. the discussion of the FCJ’s decision X ZR 29/15 - Pemetrexed by Rainer ENGELS here.
But be that as it may, I have no reason to blame the German FCJ for its approach. It may or may not be better suitable to avoid hindsight, or to provide legal certainty for users. There is more than one way to skin a cat, and the German FCJ never said to have adopted the EPO’s problem-solution approach.
However, the Swiss FPC did — repeatedly and in no uncertain terms (see e.g. O2015_018, ¶30):
Le Tribunal fédéral des brevets applique l’approche problème-solution développée par l’Office européen des brevets dans le cadre de l’évaluation de l’activité inventive.
The Federal Patent Court applies the problem-solution approach developed by the European Patent Office in the context of the evaluation of inventive step.
Thus, European patent attorneys in civil proceedings at the FPC can just do what they do all day long in proceedings at the EPO, at least in the assessment of obviousness? Actually, this would not come as a complete surprise since the second permanent judge (Tobias Bremi) and 27 of the non-permanent judges have a technological background and are European patent attorneys by training.
But hold on, it’s maybe not that easy.
Clearly, the FPC has the same reservations with respect to the choice of a (single) closest prior art; see O2013_011 in the hn and ¶5.6, with further reference to T 967/97, as well as S2017_001, ¶4.6.
But I feel that GRABINSKI is right in that this is nothing out of the ordinary in EPO practice (as it should be, taking into account the case-law of the Boards of Appeal); it is just that the term closest prior art used in the problem-solution approach might be misleading in that it suggests that this is always just a single document.
But what concerns me in recent times is the concept of a reasonable expectation of success; see this Blog here. The argument that there had been no reasonable expectation of success is easily made and thus frequently seen. And it is always easy to cast doubts in the assessment of obviousness:
Just imagine what could have gone wrong!
What is worse, such arguments cannot be proven wrong: Indeed, life is risky.
Now, what the heck is actually a reasonable expectation in the skilled person‘s eyes?
The EPO Guidelines
The Guidelines are firm instructions to the first instance bodies of the EPO; see the foreword:
As a general rule, parties may expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended. […] In case of diverging decisions of the Legal or Technical Boards of Appeal, EPO examiners and formalities officers will, as a rule, follow the common practice as described in the Guidelines.
More than 160’000 patent applications are filed with the EPO per year. And obviousness is to be assessed for all these applications; Art. 56 EPC.
If the concept of a reasonable expectation of success was of general importance for the daily practice of the first instance bodies at the EPO, one would readily expect it to be addressed in the Guidelines.
But, interestingly, it is not discussed at all — at least not in the chapter on assessment of obviousness.
The term reasonable expectation of success is only mentioned once in the Guidelines, but only a contrario, in the context of novelty of selection inventions in G-VI, 8:
The concept of seriously contemplating, or ‘ernsthaft in Betracht ziehen’ in German, is fundamentally different from the concept used for assessing inventive step, namely whether the skilled person would have tried, with reasonable expectation of success, to bridge the gap between a particular piece of prior art and a claim whose inventiveness is in question (see G-VII, 5.3), because in order to establish anticipation, there cannot be such a gap (T 666/89).
If you follow the link to G-VII, 5.3 in the hope to learn more about the concept of a reasonable expectation of success, you will be disappointed: There is nothing about reasonable expectation of success. G-VII, 5.3 is all about the could-would approach as we all know it. It reads as follows:
[T]he 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 (see G‑VII, 4).
In other words, the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83).
Hold on a second.
It is worth reading the second paragraph again. The expectation of some improvement or advantage language is taken literally from T 2/83. But did you notice the other alternative?
I don’t know where the wording in the hope of solving the objective technical problem comes from; this inconsistency has already been discussed by discussed by Wooden, Blaseby and Visser recently. It somehow found its way into the Guidelines already back in 2003. But T 2/83 is silent about hope. The could-would approach clearly is not about hope; it is about an expectation.
Anyway, there is nothing about a reasonable expectation of success. It is only about an expectation of some improvement or advantage.
Now, do these terms maybe both mean essentially the same? I.e., is
success only the short for some improvement or advantage; and
the expectation (implicitly) meant to be reasonable in any event?
If so, fine. But wouldn’t it be good to use the same terms when referring to the same things? It’s a land of confusion anyway.
Or are they not the same? If that was the case, then the concept of a reasonable expectation of success just cannot be of any broader relevance for the first instance bodies at the EPO at all. Else, it would surely be referred to in the Guidelines.
Getting confused? Hold on tight, it’s not getting easier …
Learnings from the FPC
Decision S2017_001 in r 4.7 embraces the EPO’s could-would approach recited above. With reference to Kroher (Singer/Stauder, EPÜ, 7th ed., Art. 56, ¶73-74) the decision further holds that the ‘would’ is satisfied if there is a motivation to arrive at the claimed solution and an expectation of success that this solution actually works:
Dass der Fachmann die erfindungsgemässe Lösung effektiv finden würde gilt als gezeigt, wenn aus den Unterlagen ersichtlich ist, dass der Fachmann einen Anlass hatte (‘motivation’), zur erfindungsgemässen Lösung zu kommen, und er eine Erfolgserwartung hatte, dass die erfindungsgemässe Lösung auch funktioniert (‘expectation of success’).
Noteworthy, this does not even require the ‘expectation of success’ to be reasonable, and that the ‘success’ is realistically achievable — at least not explicitly. Kroher did not put it like this. This is what Kroher exactly says (emphasis added):
Zum Could-would Ansatz gehört auch die Wertung, ob für den Fachmann eine angemessene Erfolgserwartung bestand, ob er auf der Grundlage seines Wissens und Könnens realistisch mit einem Erfolg rechnen konnte oder nicht (vgl Rdn 136).161
First, none of the references cited in the fn actually says that the assessment of a reasonable expectation of success is part of the could-would approach. So, where does this come from?
Second, assuming that it really was part of the could-would approach, then how can it be that examiners and opposition divisions of the EPO deal with more than 160’000 cases per year in the absence of any instructions in the Guidelines? An integral part of the could-would approach did not make it into the Guidelines for decades? I can hardly believe that.
Third, the cross-reference to ¶136 in the Kroher chapter exclusively relates to biotech cases. And this is where it belongs — pretty exclusively, in my perception. Actually, the Boards of Appeal of the EPO have come up with the concept of a reasonable expectation of success in biotech cases. Frankly, I am not aware of any non-pharma or non-biotech case where the reasonable expectation of success argument had ever been successfully invoked to establish non-obviousness.
In sum, Kroher’s conclusion is not readily convincing to me, and it is not supported by the references given. I could only agree, again, if the reasonable expectation of success does not mean anything different than the expectation of some improvement or advantage according to the problem-solution approach.
What troubles me is that the FPC’s concise summary in S2017_001 is not just a summary of Kroher, or any other reference cited by Kroher. Rather, it adds further terms and interpretation, and appears to be more harsh in that the terms ‘reasonable’ and ‘realistic’ are just omitted.
[…] the skilled person would have arrived at the invention by adapting or modifying the closest prior art because the prior art incited him to do so […] in expectation of some improvement or advantage (see T 2/83).
In my understanding, the test is fairly easy. The skilled person could have done a lot. What the could-would approach is all about is to sort out what he actually would have done. Nothing more, nothing less. It does so by requiring prompters (sometimes referred to as pointers) or incentives in the prior art for the skilled person to arrive at the invention.
But be that as it may, a motivation in its broadest sense (according to Google) is
a reason or reasons for acting or behaving in a particular way.
Thus, I feel it is fair to say that the motivation referred to in S2017_001 is nothing more than the prompter or incentive. No need to fiddle around with yet another term in discussing the could-would approach. Talking about incentives, prompters (and pointers) is already complicated enough.
But that’s not the end of the story. The could-would approach cannot and does not just demand for an incentive in the prior art. An incentive to do … what? Adapting or modifying the closest prior art is no value in itself. It’s all about an incentive to achieve something; it must have a goal. The could-would approach consequently asks for an incentive to adapt or modify the closest prior art in expectation of some improvement or advantage — well, actually to solve the objective technical problem.
However, there is no mentioning of a reasonable expectation of success in the could-would approach. I am currently not sure whether the FPC tends to apply a somewhat modified could-would approach, or whether it understands and applies the expectation of some improvement or advantage in the sense of a reasonable expectation of success — a concept that the Boards of Appeal have developed and applied by now only in biotech cases, to the best of my knowledge.
On a sidenote, I do not readily agree with the threshold the FPC seemingly sets as reasonable; see S2017_001 (¶4.7; emphasis added):
Ob eine angemessene Erfolgserwartung gegeben ist, hängt immer stark von den konkreten Umständen und dem betrachteten technischen Gebiet ab und dabei unter anderem erheblich davon, ob es rational möglich ist, eine Vorhersage über den Erfolg zu machen. (Fn: Vgl. z.B. Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Ors  EWCA Civ 1234 (10 October 2012), Reasons 91-95)
Note, that Medimmune v Novartis in no way puts such emphasis on the predictability of success, which is rather referred to as just one of many circumstances to consider. It reads as follows (¶91):
Whether a route has a reasonable or fair prospect of success will depend upon all the circumstances including an ability rationally to predict a successful outcome, how long the project may take, the extent to which the field is unexplored, the complexity or otherwise of any necessary experiments, whether such experiments can be performed by routine means and whether the skilled person will have to make a series of correct decisions along the way.
Der Luxusgüterkonzern Richemont liegt wegen einer patentgeschützten Erfindung mit dem Konsortium aus Rolex, Patek Philippe and Swatch Group im Clinch.
A silicon hairspring technology had been developed by the consortium, together with CSEM, already about 15 years ago.
Vor über fünfzehn Jahren haben die Grossen der Branche […] ihre Kräfte gebündelt — und mit dem Forschungsinstitut CSEM in Neuenburg die Siliziumtechnik in der Unruhspirale 2005 zur Serienreife entwickelt.
Richemont’s silicon hairspring technology Twinspir™ in Baume & Mercier’s new movement Baumatic™ apparently is the bone of contention:
The NZZaS did not provide much details about the conflict, and no sources are revealed. It is only that Baume & Mercier’s CEO, Geoffroy Lefebvre, is cited with the confirmation that discussions with the consortium are ongoing, and that no patent has been illegitimately used. B&M is said to argue that their hairspring is designed differently. According to NZZaS, the consortium does not agree, and judges will have to decide.
‘Es gibt Diskussionen mit dem Konsortium’, antwortet Lefebvre knapp. Er betont, dass kein Patent ‘gesetzeswidrig genutzt’ worden sei. Das Konsortium sieht das offenbar anders, wie von Kennern des Sachverhalts zu hören ist. Baume & Mercier argumentiert, dass ihre Unruhspirale anders aufgebaut (aus zwei Strängen) sei — und darum kein Patent verletzte. Am Ende werden die Richter den Sachverhalt klären müssen.
UPDATE 27 Sep 2018:
I have been informed that NZZaS apparently already mentioned in an article of 2 Sep 2018 that the consortium alleges a patent infringement (see here):
Das Konsortium hat offenbar bei Richemont wegen einer möglichen Patentverletzung interveniert.
Again, no sources or further details are revealed; the basis of this information is obscure. It remains to be seen how this finally unfolds.
UPDATE 07 Oct 2018:
The NZZaS continued its serial on this topic today; see here. Frankly, without any significant news. It is only that Patek Philippe apparently also believes that Baume & Mercier infringes the patent:
Patek Philippe wie auch unsere Partner Swatch und Rolex sind effektiv der Ansicht, dass Baume & Mercier unser Patent (Silinvar) verletzt.
Contrary to what Baume & Mercier’s CEO Geoffroy Lefebvre had mentioned, Patek Philippe submits that the consortium is not currently engaged in discussions with Richemont / Baume & Mercier.
UPDATE 11 Nov 2018:
Yet another update by NZZaS today. But now, it’s apparently the other way around. NZZaS mentioned in an article about the Richemont group today that Richemont has challenged the patent:
Richemont hat kürzlich das Patent des Konsortiums angegriffen. Es ist unklar, wie der Streit beigelegt wird – […].
The article reveals no further details or sources.
I have attended quite some public hearings at the FPC over the last years. Frankly, most of them are boring.
Why is that?
It surely is not because of the subject-matter at stake; that’s the interesting part. It’s the pleading notes that bother me. In most cases, pleading notes are handed over to the judges, the clerk and the other party, and those pleading notes are then read out. Literally.
Guess, what happens: Everybody is immersed in a manuscript, reading it on his/her own — while someone reads the same pleading out aloud.
I cannot think of a worse disconnect between the pleading attorney and the judges! One could as well exchange the pleading notes in writing and skip this part of the hearing. It’s a somewhat weird happening.
Wir neigen dazu, statt einer Rede einen Schriftsatz zu verfassen und im Gerichtssaal beim Ablesen daran zu vertrocknen.
We tend to write a brief instead of a speech and dry up in the courtroom as we read it.
I am trained as a patent attorney, not as a lawyer. Even though I never liked this reading ceremony, I thus complied with it by now. It’s probably not the best idea to be a maverick when not on your home turf.
But does it really have to be like that?
I don’t think so. It’s not the law. I am used to argue my cases for hours in hearings at the EPO, with just some bullet points on the desk to keep me on track. Never would I even think of handing over pleading notes to anyone. My only goal is to get my message through to the Opposition Division or the Board.
Cutting a long story short:
A hearing shouldn’t be a reading, in my opinion.
I am glad to see that it more frequently happens in recent times in hearings at the FPC that no pleading notes are read out aloud and handed over anymore. What I believe is great. Let the real pleadings begin!
I’d be keen to know your thoughts on this:
Should pleading notes be handed over and read out in a hearing?
No (89%, 25 Votes)
Yes (11%, 3 Votes)
Total Voters: 28
This poll had been open from August 30 until September 30, 2018. I do not claim that it had been a representative survey — but the tendency is pretty clear …
It’s showtime again for the SPC community — but don’t expect big surprises:
The CJEU handed down its judgment in the matter Teva et al. ./. Gilead (C-121/17) earlier today, concerning an SPC for the combination of tenofovir disoproxil (TD) and emtricitabine, i.e. Gilead’s Truvada®.
Be remembered that Arnold J had referred the same question from the Actavis ./. Sanofi (C-443/12) case again, i.e.:
What are the criteria for deciding whether ‘the product is protected by a basic patent in force’ in Article 3(a) of the SPC Regulation?
Now, in case of a combination product, the CJEU’s answer is as follows (emphasis added):
Article 3(a) of Regulation No 469/2009 must be interpreted as meaning that a product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of that provision where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, those claims relate necessarily and specifically to that combination. For that purpose, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent:
the combination of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent; and
each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent.
It will now be on the referring court to decide how this will play out in the matter at hand. However, there is a quite clear message from the CJEU in ¶56:
Consequently, it does not seem possible that a person skilled in the art, on the basis of the prior art at the filing date or priority date of that patent, would be able to understand how emtricitabine, in combination with TD, necessarily falls under the invention covered by that patent.