As already reported in the newspaper ‘Der Bund’ on 19 December 2018, the Swiss watch manufacturer Glycine Watch SA was ordered to abstain from using its current logo because it could be confused with the logo of the luxury label Giorgio Armani.
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’s old website logo
Glycine’s logo at stake
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:
9
Magnetic or optical data carriers.
12
Vehicles.
16
Printed matter.
28
Toys, especially Postbus models.
39
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.
41
Services related to education and training, in particular in the field of transport, the carriage of persons, goods and goods.
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.
Pretty straight-forward, isn’t it? In addition to printed timetables, the network routes are nowadays even available online — and I can hardly even remember a time when this had not been the case.
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:
9
Magnetic or optical data carriers.
12
Vehicles.
16
Printed matter.
28
Toys, especially Postbus models.
39
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.
41
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.
HAPPY HOLIDAYS!
Judge Gilmore
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 … 😉
Happy Holidays!
Warmest wishes,
Martin Wilming
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:
No, not about the civil rights movement. I am far less ambitious. I am just wondering: Wouldn’t it be great if one day we would all do the same when assessing obviousness?
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.
Loosely translated:
The Federal Patent Court applies the problem-solution approach developed by the European Patent Office in the context of the evaluation of inventive step.
Hooray! They play the game as I know it!!
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.
Not fully according to expectation …
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.
Patent applications filed with the EPO (Source: EPO)
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).
What?!
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?
Too many people making too many problems?
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.
Ask Google for a definition of ‘motivation’, and you will get this.
Now, where does the ‘motivation’ referred to in S2017_001 come into play? There is no need for the additional term ‘motivation’ in the could-would approach. It might even cause confusion with the former teaching-suggestion-motivation (TSM) test in the U.S., or the Veranlassung approach of the German FCJ (which GRABINSKI says is very similar but not the same as the EPO’s could-would approach).
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.
In a nutshell
The problem-solution approach which the FPC has comitted to apply includes the could-would approachwhich is a pretty decent tool that has been applied by the first instance bodies of the EPO for decades.
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 [2012] 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:
Details of B&M’s Baumatic™ movement with Twinspir™ technology (website)B&M logo
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.
Reading for hours? Not in court, please!
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.
Loosely translated:
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
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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.
Just in case you didn’t notice this in the rush before the holiday season:
There is a new referral pending before the Enlarged Board of Appeal (EBoA) of the EPO, i.e. G 1/18.
Boards of Appeal
It has apparently been put on the website of the Boards of Appeal already on June 25, but I only took notice now. In accordance with Art. 112(1)(b) EPC, the former President of the EPO, Benoît Battistelli, has referred the following point of law concerning the interpretation of Art. 108 EPC to the EBoA, in his last month in office:
Lorsque la formation d’un recours et/ou la taxe de paiement ont lieu après l’expiration du délai de deux mois prévu à l’article 108 CBE, le recours est-il irrecevable ou réputé non formé, et la taxe de recours doit-elle être remboursée?
The provisional translation of the question into English, as provided on the website of the Boards of Appeal, reads as follows:
If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to have been filed, and must the appeal fee be reimbursed?
The referral is a booklet of 18 pages in French language; please find a ‘quick and dirty’ English translation below.
Actually, the question is not all new. Essentially the same question had been at stake in cases G 1/14 and G 2/14 — but remained undecided (abandoned application in G 2/14; inadmissible referral in G 1/14). However, the former President pushed the issue again before the EBoA.
The referral was triggered by T 1897/17. In that case, the Board held that an appeal lodged after the expiry of the two-month period is inadmissible; however, it is deemed to have been filed and therefore to have legal existence; the appeal fee cannot therefore be refunded.
As set forth in the referral, this question has quite some relevance beyond appeal proceedings since further provisions of the EPC are worded similarly, e.g.:
The request is currently deemed not to have been filed in all these cases and the fee is reimbursed in case of late payment of the fee.
The former President strongly advocates to maintain the current system whereby an appeal fee that is paid late must be refunded because the appeal is considered not to have been filed; similarly, where the appeal is filed after the prescribed time limit, the appeal fee paid within the time limit shall also be refunded.
I would happily agree with this if it was the outcome.
We have seen some interesting decisions lately that deal with basic principles in the assessment of inventive step / obviousness. For instance, the Supreme Court provided guidance how to deal with a non-enabling disclosure as a closest prior art document; see this Blog here. But there is yet another decision of potentially wider relevance, i.e. in that it apparently re-defines how to formulate the ‘objective technical problem’.
It’s silly season now, and I could not help but reflect a bit about the typical learning curve of a patent attorney trainee when getting acquainted with such basics. If you are in a rush, feel free to jump over here.
Patent law is somewhat mysterious. The basics of patentability are very simple: The claimed subject-matter shall
be new (‘just don’t claim exactly what has been out there already’); and
involve an inventive step (‘a bit creative, please – not just obvious’);
On the merits, that’s pretty much it. Admittedly, there are some side aspects to observe, e.g.
it should have industrial applicability (‘it should be useful’);
it should not be excluded from patentability by law (‘don’t do what is explicitly forbidden’);
it should be sufficiently disclosed (‘tell the world how to make use of it’).
But that doesn’t seem to be a big deal. A quite common first thought of a patent attorney trainee goes like:
Well, that’s it? Why do I have to wait three years to sit (and pass!) the exam?
Learning by doing
Later, one realizes that things are much more complicated than it seemed at first glance — and that it’s probably not a bad idea to test these basic concepts in real cases for a while, and one is grateful for some supervision before actually sitting the exam (while still at least hoping to pass).
Thereafter, it’s like driving a car. Passing the exam does not yet mean that you are a good driver. Still, at some point sooner or later and with some experience in the field, almost everybody will fairly get along on the streets.
This is no invention. No way!
It’s the same with patent attorneys: We are said to have quite firm opinions (when we finally have made up our mind), and it’s our bloody job to transfer this opinion to whoever needs to be convinced, every single day.
But patent attorneys constantly fail. Just look at all the negative office actions in the mailbox every day. Still, we know how to play the guitar. No doubt that a case only failed because the specific piece of music was not well perceived by the audience.
But when the common general understanding of how to assess inventive step / obviousness is whobbling, I am getting concerned. That’s my day-to-day business! Do I still play the game correctly?
Assessment of ‘inventive step’
In knowledge of what the invention is, it’s hard (if not impossible) to objectively evaluate whether or not it had been obvious before the invention has seen the light of day. As soon as you are aware of the invention, the unavoidable hindsight bias undermines any objective assessment.
Case law should be predictable, and individual judgments must be ‘right’. That’s a tricky balance — and whenever things are tricky, it’s comfy to have standardized tools at hand. This is where the EPO’s problem-and-solution approach comes into play (Guidelines, G-VII, 5), and which the FPC has repeatedly indicated to apply. It aims to avoid hindsight bias, and it does so with a rigid framework to be worked through. In brief, the problem-and-solution approach involves three main steps:
Step i), i.e. the question of whether or not something should be considered as the ‘closest prior art’, is mostly a major issue in any discussion of inventive step. I won’t dive into this now, but I strongly recommend Oliver Randl’s Post on an his Blog ‘K’s Law‘. (The Blog is dormant now because he became a member of the Boards of Appeal.) His comparison of assessment of inventive step with mountaineering is just great.
Further, one may well discuss for quite a while in step iii) what a skilled person would actually have done or not. The EPO’s could-would approach requires that
[…] the prior art as a whole […] 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 into account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves.
The gist is that hindsight should not be an issue if there is a pointer or an objective incentive to combine two pieces of prior art. Fine. But …
The definition of the ‘objective technical problem’
Everything hinges on the definition of the objective technical problem in step ii), and this is what this Post is all about. According to the EPO Guidelines (G-VII, 5.1),
[…] one establishes in an objective way the technical problem to be solved. To do this one studies the application (or the patent), the ‘closest prior art’ and the difference (also called ‘the distinguishing feature(s)‘ of the claimed invention) in terms of features (either structural or functional) between the claimed invention and the ‘closest prior art’, identifies the technical effect resulting from the distinguishing features, and then formulates the technical problem. […]
It is noted that the objective technical problem must be so formulated as not to contain pointers to the technical solution, since including part of a technical solution offered by an invention in the statement of the problem must, when the state of the art is assessed in terms of that problem, necessarily result in an ex post facto view being taken of inventive activity (see T 229/85).
That’s how I’ve learned to play the game. A plain and simple mechanism:
identify the distinguishing feature (e.g. bolt and nut instead of a nail);
identify the technical effect of the distinguishing feature in the context of the invention (e.g. ease of detachability)
define the objective technical problem based on the technical effect of the distinguishing feature (e.g. facilitate detachability)
Does O2015_008 lower the bar?
When re-reading the judgment O2015_008 of 14 March 2018 (commented on this Blog here), I stumbled upon a general remark in ¶66 that I had overlooked before. It reads as follows (translated from French):
Nevertheless, the question must be asked whether the objective problem that is used for the problem-and-solution approach […] finds a basis or motivationin the closest prior art document or is part of the standard problems for the skilled person, and does not incorporate elements of the proposed solution into the patent (cf. T 59/90, r. 8). This is important to avoid hindsight bias.
(A reasoning along these lines, but in less explicit terms, can also be found in ¶33 of the decision O2015_018 of 15 June 2018, with the very same reference to T 59/90; see this Blog here.)
First, I just don’t know for sure what is meant with ‘standard problems’; but maybe this refers to e.g. ‘less expensive’, ‘faster’, ‘more efficient’ or similar things.
But be that as it may, I feel that the whole approach is flawed.
Why should it be required to have a basis or motivation for the ‘objective technical problem’ in the ‘closest prior art’?
Let’s take a simple example:
The invention is a car with an allegedly clever engine — but there is a lot of other stuff recited in the claim, e.g. wheels, mirrors, bumper, a radio, etc.
Obviously great
The ‘closest prior art’ shows almost everything, in particular the allegedly clever engine. So this really is a reasonably chosen ‘closest prior art’. In fact, it is almost novelty destroying. It is only silent about the radio.
Car radios are perfectly known, but in no way mandatory. Thus, there clearly is no implicit disclosure of a radio in the ‘closest prior art’, and one has to deal with it as a matter of obviousness.
In my perception, a proper definition of the objective technical problem will somehow need to address entertainment and/or information in a car, while carefully avoiding to mention a radio.
The alleged invention correctly just cannot survive the problem-and-solution approach because there are a lot of car radios in the prior art as a whole, and the skilled person would surely have integrated them as a straight-forward solution to the objective technical problem to be solved.
But I am not so sure about this if the reasoning in ¶66 of O2015_008 was correct. To be frank, I don’t even have a clue how the objective technical problem should then be defined. There just is no ‘basis or motivation’ towards entertainment or information in that document.
Alternatively, let’s start from a car with wheels, mirrors, bumpers and a radio as the ‘closest prior art’, and then try to combine it with the (not anymore) ‘closest prior art’ showing the engine. Assume the clever engine is just shown somewhere in the smallprint, without any indication of advantages or further explanations. It’s just there, and it’s not immediately apparent why it actually is clever. You will then have a hard time to hunt this April Fool’s joke of an ‘invention’ down with the problem-and-solution approach, in the absence of any pointer towards the invention, i.e. to use the engine from the prior art in a car with wheels, mirrors, bumper and — believe it or not — a radio.
Frankly, this cannot be it. I feel there must be a bug in a test that does not reliably sort out such non-inventions.
Struggling with this, I sought for guidance in T 59/90 (¶8) referred to in ¶66 of O2015_008. But there is none. It might be the last paragraph of ¶8 that appears to support the view taken in ¶66 of O2015_008, at least at first glance. It reads as follows:
Daraus muss geschlossen werden, dass aus [dem nächstliegenden SdT] das der patentgemässen Aufgabe zugrundeliegende Problem nicht bekannt war, und demzufolge auch die Lösung der Aufgabe aus [dem nächstliegenden SdT] in Verbindung mit dem allgemeinen Fachwissen nicht nahegelegt gewesen sein kann.
Loosely translated:
It must be concluded that the actual technical issue underlying the objective technical problem was not known from [the closest prior art], and therefore the solution of the problem could not have been obvious from [the closest prior art] in connection with the general technical knowledge.
However, the Board did not deal with the formulation of the objective technical problem here. It took the objective technical problem as it had been properly defined beforehand, and then summarized its assessement according to step iii), i.e. the could-would approach.
At closer scrutiny, it turns out that all this was only intended to sum up the reasons in respect of a single attack based on the ‘closest prior art’ per se, only in further view of the common general knowledge of the skilled person. Thus, it had essentially been argued by the opponent that the ‘closest prior art’ in itself would render the claimed subject-matter obvious for the skilled person. In that case, I might agree that the ‘objective technical problem’ needs to have a basis or motivation in the ‘closest prior art’ because it is not combined with yet another document but rather is considered self-contained, only seen with the eyes of the skilled person (common general knowledge). Where else should the pointer come from, if not from the ‘closest prior art’ in such a case?
But as soon as the ‘closest prior art’ is considered in further view of yet another document, the basis or motivation may well be derived from that further document.
And this is exactly what has been done in T 59/90. The Board moved on to assess in ¶9 whether there is any incentive towards the solution of the objective technical problem in any other prior art document:
It remains to be checked whether a suggestion for the solution of the objective technical problem can be derived from any of the other documents on file.
Note that the Board did not touch the wording of the ‘objective technical problem’ when moving on to check the combinations with the other documents on file. This is the problem-and-solution approach; nothing more, nothing less.
Further, I strongly doubt that this decision is of much relevance at all. It had been only distributed to Chairmen of other Boards (classified as ‘C’), and it has been cited by other Boards only once in 25 years (T 1009/96), for an unrelated aspect. And it is not that this Board had cited it by its own volition. Rather, it had to bother with T 59/90 because a party brought it up. It had been argued that a piece of prior art cannot be considered as ‘closest prior art’ at all because it did not deal with the specific problem of the invention. But this is not my point here, and the argument failed anyway. What is more, T 59/90 is not even mentioned in the reference book ‘Case Law of the Boards of Appeal‘. Thus, the decision has effectively been ignored by other Boards for a quarter of a century. Rightly so, because there is nothing special in it.
Concluding, I don’t see that T 59/90 supports the view taken in ¶66 of O2015_008 (except for the special situation where lack of inventive step is argued based on a single reference, i.e. the ‘closest prior art’ per se), and the above example shows how it would almost inevitably lead to obviously wrong results. In my perception, there is no need to spice up the well established framework of the problem-and-solution approach with yet further requirements. Rather, it can and should be applied as set forth in the Guidelines, for that case law remains predictable. And I have no reason to doubt that it leads to ‘right’ decisions — if applied correctly.
UPDATE 26 Sep 2018:
Decision T 910/90 states the following in ¶5.1 (and I fully concur with this):
Dabei kommt es nicht darauf an ob diese Aufgabe bereits im nächstkommenden Stand der Technik angesprochen ist, sondern darauf was der Fachmann beim Vergleich des nächstkommenden Standes der Technik mit der Erfindung als Aufgabe objektiv erkennt.
Loosely translated:
It does not matter whether this problem is already addressed in the closest prior art; rather, it is decisive what the skilled person objectively recognizes as the problem when comparing the closest prior art with the invention.
However, [the definition of the objective technical problem according to the problem-and-solution approach] is only valid insofar as the technical problem thus determined can reasonably be presumed to be a problem that arises without inventive effort within the general framework of the closest prior art document. Otherwise, this approach would focus the disclosure of the closest prior art and its interpretation in the direction of the invention, and introduce hindsight. (cf. T 59/90, ¶8)
is obvious in view of the state of the art (Art. 56 EPC).
The fate of a patent application thus critically depends on the ‘state of the art’. Now, what is comprised in the ‘state of the art’? The EPO educates its customers in the Inventors’ handbook in plain and simple words:
A prehistoric cave painting can be prior art. A piece of technology that is centuries old can be prior art. A previously described idea that cannot possibly work can be prior art. Anything can be prior art.
Easy, isn’t it? Not so, the closer you look.
In legal terms, the ‘state of the art’ is defined in Art. 54(2) EPC which reads as follows in the three official languages of the EPC (emphasis added):
German
English
French
Den Stand der Technik bildet alles, was vor dem Anmeldetag […] der Öffentlichkeit […] zugänglich gemacht worden ist.
The state of the art shall be held to comprise everything made available to the public […] before the date of filing […].
L’état de la technique est constitué par tout ce qui est été rendu accessible au public avant la date de depot […].
There are at least two issues that have recently been looked at more closely in relation to the term ‘state of the art’ in Switzerland:
How shall a pre-published, non-enabling disclosure be dealt with?
The Swiss Supreme Court recently held that even a non-enabling disclosure well belongs to the ‘state of the art’ (contrary to what the EPO typically does, i.e. to just ignore it; see Guidelines, G-IV, 2). But, in the Supreme Court’s view, such a piece of prior art cannot be assessed with the EPO’s problem-and-solution approach because the objective technical problem in such a case is just to find a working solution for what had been insufficiently disclosed previously, and there is an inherent motivation to search for that solution; see this Blog here.
What actually is the ‘art’ referred to in ‘state of the art’?
At the INGRES annual meeting of July 5, 2018, Hannes Spillmann briefly discussed a clash between two Board of Appeal decisions at the EPO, i.e. T 0172/03 and T 2101/12. The latter explicitly disagrees in its headnote with the headnote of the earlier decision T 0172/03, in the fundamental question of what actually is meant with
state of the art.
Which ‘art’ does Art. 54(2) EPC refer to? Can something described previously be excluded right from the outset just because it is not related to classic ‘technology’? The headnotes of T 0172/03 suggest exactly that (emphasis added):
1. The term ‘state of the art’ in Article 54 EPC should, in compliance with the French and German text, be understood as ‘state of technology’, which in the context of the EPC does not include the state of the art in commerce and business methods. The term ‘everything’ in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology.
2. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons).
Points 8 to 10 of T 0172/03 referred to in hn 2 leave no doubt that the gist really is to just exclude certain publications from any consideration as ‘state of the art’ whatsoever:
[T]he decision under appeal […] identifies the closest prior art as “the existing order placing mechanism” as if such a business scheme qualified as prior art as any other piece of technical information. […]
It can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character. A consistent construction of the patentability provisions requires the term “everything” in Article 54(2) to be understood as concerning such kind of information which is relevant to some field of technology.
Catch-22
I am having difficulties to read an element (“art” / “Technik” / “technique”) of the phrase that is to be defined (“prior art” / “Stand der Technik” / “l’état de la technique”) in Art. 54(2) EPC into the definition itself. This is a Catch-22, in my perception; see also T 2101/12, ¶6.6 in this respect.
Luckily, T 2101/12 sets it right again; the hn reads as follows:
I fully concur with this. Whatever has been made available to the public is to be considered ‘state of the art’ in the sense of Art. 54(2) EPC, irrespective of whether it relates to a field of ‘technology’ or not.
It remains to be seen how the case law of the Boards will develop. Note that T 2101/12 only explicitly disagrees with hn 2 of T 0172/03. However, a quotation from hn 1 of T 0172/03 even made it into the EPO Guidelines for Examination (G-VII, 2):
The ‘state of the art’ for the purposes of considering inventive step is as defined in Art. 54(2) (see G‑IV, 1). It is to be understood as concerning such kind of information as is relevant to some field of technology (see T 172/03).
It is not that I have an issue with this quote. Even a non-technological ‘state of the art’ may well be relevant to some field of technology, e.g. when a mere business method as ‘state of the art’ is automated, and it is patentable when this is achieved in a new and non-obvious manner. This is how T 2101/12 approached it. But this understanding clearly is not what T 0172/03 advocated for. Incomplete reference to only part of hn 1 of T 0172/03 is misleading, at best. In my opinion, reference to T 0172/03 should be deleted from the Guidelines completely.
The following is just to name a few examples of state of the ‘art’ not taken from what one would typically consider a ‘field of technology’. Have fun.
1. SpongeBob
I once had a hard time to properly communicate to a client that a U.S. examiner held SpongeBob to anticipate his invention:
The cartoon SpongeBog SquarePants Episode 1 ‘Help Wanted’ teaches a shearing tool which is mounted coaxially, rotatable, wherein the shearing tool comprises at least a bent arm wherein the tool has at least one opening.
The examiner referred to the following screenshot:
Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. […] The origin of the drawing is immaterial. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.
Luckily, the SpongeBob reference was overcome and the application proceeded to grant; US 8,622,507 B1, see the SpongeBob reference on the title page (‘Other Publications’).
2. The Beano
An entry signal system for pets is described and claimed in GB 2 117 179 A (filed March 18, 1983 and claiming priority of March 18, 1982). The applicant had been faced with the comic strip ‘The Beano’ (No. 2015 of February 28, 1981) as ‘state of the art’:
GB 2 117 179 A, Fig. 7
The Beano, No. 2015 (Feb. 28, 1981)
Reference to ‘The Beano, No. 2015, page 1’ is indicated on the title page of GB 2 117 179 A, under the heading ‘Documents cited’.
3. James Bond
On his fourth mission ‘Thunderball‘, James Bond aimed to recover two stolen warheads. They had been taken by the evil SPECTRE organization. The world was held hostage and Bond headed to Nassau where he was forced into a thrilling confrontation with SPECTRE agent Emilio Largo, on board and around his boat, the Disco Volante. Bond used a special breathing apparatus:
Sean Connery as James Bond in ‘Thunderball’ (1965; Eon Productions, United Artists); Screenshot at approx. 65 min.
This scene was cited as ‘state of the art’ in GB 2 273 053 A; see ‘Documents cited’ on the title page. Indeed, figure 1 of GB’053 shows a stylized special agent with a somewhat similar breathing apparatus:
GB 2 273 053 A, Fig. 1
4. The Holy Bible
If I had prosecuted the following claim (US 10/212,636, claim 2 as filed), I surely had not expected to become best buddies with the examiner:
But being faced with the Holy Bible as ‘state of the art’ might make one’s blood run cold in one’s veins! The rejection read as follows:
[The claim] is rejected under 35 U.S.C. 102(b) as being anticipated by the Holy Bible (Levite, Moses, et al.)
[…] In Genesis, Chapter 41, we are told that Pharaoh appointed Joseph to be his representative and instructed him to enter into contracts to purchase grain. These contracts included an offer with an activity (supply grain) and a benefit (get paid for the grain). Payment was made upon delivery of the grain. The story of Joseph is about 4,500 years old. Neither Joseph nor Pharaoh were considered innovators – the principal / agent relationship is of immemorial antiquity. It no doubt predates civilization itself. The purpose of rejecting this claim using the Bible as reference is to illustrate how ancient the claimed subject matter is. Many of Applicant’s claims could also be rejected using the same reference.
The applicant took up the fight, and his response really is a good read:
On a sidenote, I have once been told (but did not manage to independently verify) that a patent application pertaining to a voice-controlled automated lighting system had been challenged at the EPO with reference to the Holy Bible, too. More particularly, with reference to Genesis, Chapter 1:
And God said, ‘Let there be light’, and there was light.
5. The Law of Agency
Misfortunes never come singly: The claim recited above in (4) had also been rejected in view of the law of agency. The apparently highly motivated examiner held:
Basic agency law teaches that a principal may conduct any business through an agent (representative) that he could conduct in person. This includes entering into contracts. To enter into a contract, one determines a recipient (the other party) and an offer, which includes an activity (e.g., paint my house) and a benefit (consideration). If using an agent, the principal transmits instructions to the agent to provide the offer to the recipient. In any contract, there is the step of determining whether the recipient has performed the activity and providing the benefit to the recipient if the recipient has performed the activity.
6. Donald Duck
In a 1949 Walt Disney comic, a sunken ship had been raised by Donald Duck and his nephews. They pushed ping pong balls into it to lift it up:
A similar technology has actually been used later, for the first time in 1964 when Karl Kroyer lifted a sunken ship with 6’000 sheep right in front of Kuwait’s major fresh water intake in the harbor.
Danish newspaper scan (taken from here; primary source unknown)Prior art database?
Rumor has it that Kroyer’s patent application was rejected in view of the comic strip (as reported e.g. in the newspaper scan above), allegedly by the Dutch patent office — but I could not find any proof for this. Patents have been granted elsewhere (e.g. in Germany and the U.S.).
Nevertheless, I have no doubt at all that this comic strip would have had to be considered as ‘state of the art’ in the assessment of patentability of Kroyer’s invention.
It is a good tradition that the President of the Swiss Patent Court takes the opportunity to directly address users of the court at the occasion of the annual INGRES conference, and to remind them (or inform for the first time) of certain procedural aspects of relevance for practitioners.
The new President Mark Schweizer did not break with this tradition:
1. Workload
Mark Schweizer informed about the current workload at the court and presented the figures of the first six months of 2018. Nothing out of the ordinary, actually.
Ordinary
proceedings
received until
June 30
disposed of until
June 30
Infringement w/o counterclaim
5
6
Nullity w/o counterclaim
2
1
Infringement and nullity
1
2
Ownership
–
1
Claim
–
1
Miscellaneous
1
1
Total
9
12
Summary
proceedings
received until
June 30
disposed of until
June 30
injunctive relief / preservation
3
1
Description
1
1
Total
4
2
2. Amendment of the PatCA
The amendements to the PatCA will come into effect as of August 1, 2018, with the most important aspect being that not only the President but also the second ordinary judge (currently Tobias Bremi) may preside over proceedings in the capacity of instructing judge.
See this Blog here for further information about the forthcoming changes.
3. Anonymisation of decisions
Decisions in summary proceedings will not be anonymised anymore (decisions in main proceedings had not been anonymised anyway); see this Blog here.
No rule without exception: If you feel that special circumstances require your decision to be published only in anonymised form, a reasoned request should be filed.
4. Case management
a) Less Doodle
Figuring out a convenient date with Doodle apparently turned out to be more and more time consuming for the court (see this Blog here for further information).
Henceforth, parties will only provided once with a set of only three dates to choose from in a Doodle form (not five dates as under the previous regime), whenever possible in three different weeks and on different days of the week.
b) Preparatory hearing
The parties are summoned to a preparatory hearing not only when both sides desire so, but even if only one side does. And the hearing will be held even if the other side does not appear.
Again, no rule without exception. But one should be prepared that there is no chance to hide from unpleasant provisional opinions or questions of the court; see this Blog here (item 2) for further information.
c) Timeline of proceedings
If no settlement can be reached at the preparatory hearing, a timeline is established for the further course of the proceedings, to ease projectability for the parties and the court; see Art. 8 of the Guidelines on Proceedings.
The date of the main hearing will likely not be fixable at the preparatory hearing, since the full panel of judges is not yet established at that time. But still, a time frame for the hearing will be indicated at the preparatory hearing, with the exact date being fixed thereafter.
It remains to be seen how this works out in practice. Mark Schweizer made the reservation that changes to this procedure are not excluded, in view of the planning fallacy:
The planning fallacy is that you make a plan, which is usually a best-case scenario. Then you assume that the outcome will follow your plan, even when you should know better.
— Daniel Kahneman
d) Single exchange of briefs in summary proceedings
The typical course of actions in summary proceedings is:
reqest for interim injunctive relief;
defendant’s answer;
no second exchange of briefs;
plaintiff’s limited reply to validity issues raised by defendant (if any);
expert opinion of the judge-rapporteur;
the parties comment on the expert opinion at the hearing (orally).
4. Specific cases
The President briefly presented the following decisions:
The ‘house ban’ of a (now: former) Board of Appeal member caused a huzzle and bustle a while ago; see e.g. this Blog here. But it got silent lately. Thanks to Thorsten Bausch’s report on Kluwer Patent Blog, we now got to know the outcome of the EPO President Benoît Battistelli’s criminal complaint: Nothing. Zero. Actually, it could not have failed more spectacularly. The original judgment of the Munich Regional Court in German and a translation into English language are provided below.
Whatever Mr Battistelli’s place in the history books may finally be: This ‘house ban’ saga will surely not be a glorious chapter.
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