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

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

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

The following topics are covered:

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

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

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

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

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

/MW

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A new popular initiative is in the making: State-funded patent litigation!

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I am in touch with some colleagues who advocate for a very much disadvantaged minority: Patentees!

A legitimate initiative, indeed. Just think of it: Patent owner are milked over and over again! Obtaining a patent is an expensive exercise in the first place, and others are piggy-back riding on patentees’ outstanding technical achievements later on for free. On top of that, the state pockets annually recurring fees. And as if all this was not unfair enough, patent owner also have to finance the enforcement of their patents against free-riders.

Could patentees actually be treated any more terribly?!

Activists hugely support the popular initiative

A straight-forward tweak of Art. 1 para. 3 PatA that is currently considered for inclusion in the Federal Constitution could be as simple as this:

Patents are granted without the guarantee of the State, but the costs of enforcing a patent are borne by the State.

This could be pragmatically funded e.g. with an almost neglectable increase of the value added tax (VAT). Court fees of the FPC could accordingly be abolished (btw, did you ever realize that the building of the Federal Administrative Court where the FPC holds its hearings closely matches the shape of Dagobert Duck’s ‘Geldspeicher‘?!), and patentees might submit their counsel’s invoices for legal representation and assistance of the patent attorney (necessary expenses, you know) to the court for refund or direct settlement.

A committee is currently being formally established to further elaborate the popular initiative. The current working title is ‘Patent-Pflegeinitiative’ (apologies, but this only works in German language).

The committee is still looking for motivated people to join; please use the contact form below. You may also drop your spontaneous ideas or visions on the topic in the form, or in the comments at the very bottom of this post. Thank you.

Cheers,
Martin Wilming

April Fool!

THE COMMITTEE NEEDS YOU!

Join the committee for a popular initiative to pave the way for state-funded patent litigation now. Leave your contact details below, to stay tuned.

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Hey, Blackstone Resources, what is wrong with you?

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

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

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

Are you still with me? Okay, listen!

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

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

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

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

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

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

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

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

BLS in Döbeln, Germany (image courtesy of BLS)

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

Now, guess what the answer was?

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

How can that be?

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

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

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

look closer …

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

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

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

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

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

Curtain up!

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

and its three priority applications, i.e.

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

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

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

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

Now, what is the patent family all about?

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

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

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

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

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

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

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

UPDATE of 22 Feb 2022:

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

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

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

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

Why not just suing them?

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

According to Art. 12 para. 1 PatA,

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

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

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

And, indeed, the situation is tricky:

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

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

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

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

/MW

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Job opening: Secretary General / Court Clerk at the FPC

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

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

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

Reported by Martin WILMING

UPDATE 03 January 2022

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

JOB OFFER

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Satisfaction (almost) guaranteed

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It’s not only important for attorneys and patent attorneys, but also for courts like the FPC:

Know your clients!

Towards this end, the FPC has asked all professional representatives (attorneys-at-law and patent attorneys) who had been involved in proceedings since 1 January 2017 to complete a written questionnaire. This was actually already the second user satisfaction survey: The first one covered the start-up phase of the FPC from January 2012 until about April 2017; see this Blog here.

The new results have been published yesterday; see below for the English and German versions of the official report. Based on 194 questionnaires, the return rate in 2021 was 38% (2017: 189 questionnaires; 48% return rate). 

Satisfaction
(loud!)

The good news up-front (spoiler alert): More than 90% of the users are «pleased» or «very pleased» with the overall quality of the services provided by the FPC. There may surely be businesses that boast of even greater customer satisfaction. But in adversarial court proceedings at least one party is unsatisfied with the judgment on the merits, in most of the cases. Against this background, an overall satisfaction rate of > 90% is really outstanding.

The overall satisfaction rate cannot readily be compared with the previous survey, simply because that question had not been asked back in the days. But let’s have a closer look at some of the current numbers, compared to the last survey back in 2017 where that is possible.

Representatives’ appreciation of the total duration of main proceedings is almost identical (overwhelmingly considered «appropriate»):

dyerware.com


 

Likewise, representatives’ appreciation of the time limits and time extension options in main proceedings is almost identical (overwhelmingly considered «appropriate», even slightly more than in 2017):

dyerware.com


 

However, representatives’ appreciation of the total duration of summary proceedings has changed considerably. The share of «appropriate» votes increased by about 16% (76%, compared to 60% in 2017); the «too long» and «long-ish» votes went down accordingly:

dyerware.com


 

Indeed, summary proceedings are relatively speedy proceedings, with typically only one exchange of briefs and tight case management. This is reflected by the representatives’ appreciation of the time limits and time extension options in summary proceedings. The share of «appropriate» votes increased by about 11% (83%, compared to 72% in 2017); the «too long» and «long-ish» votes are almost neglectable, while «too short» and «short-ish» votes are slightly on the rise:

dyerware.com


 

The FPC also inquired again, in general terms, whether its judgments are considered clear and comprehensible. It appears that the users’ satisfaction with the FPC’s reasoning in judgments has significantly increased; a much higher share of highest level «applies» votes were casted:

dyerware.com


 

Representatives were also asked whether oral proceedings by videoconference should be possible after the end of the Corona pandemic legislation, at least with the consent of both parties. That’s apparently a controversial issue; even though 49% of clear «applies» votes were casted, 38% of the votes were on the wider «does not apply» side of the spectrum:

dyerware.com


 

Further, a clear majority is against conducting oral proceedings by videoconference against the will of a party (76%).

Finally, the FPC wanted to know whether the time needed by the judge-rapporteur to deliver the expert opinion was considered appropriate or on the (too) long side. More than 90% consider the timeliness «appropriate» in summary proceedings. A majority of 61% held that timeliness is «appropriate» in main proceedings, too. Accordingly, about 38% would like to receive the expert-opinion earlier in main proceedings.

Reported by Martin WILMING

USER SATISFACTION SURVEY RESULTS

Official German version:

Official English version:

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

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

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

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

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

The reasoning of the EBA is straight-forward.

Interpretation of article 116 epc

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

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

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

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

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

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

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

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

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

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

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

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

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

The role of the parties’ consent

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

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

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

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

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

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

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

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

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

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

Now, what does that mean for first instance proceedings?

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

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

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

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

Reported by Martin WILMING

G 1/21 — Decision of 16 July 2021

Composition of the Enlarged Board:

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


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PatA revision: The dust is settling (slowly)

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

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

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

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

The tried and tested ‘unexamined’ Swiss patent is staying

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

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

fully examined Swiss patent on request

It shall be possible to request examination on the merits.

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

Compulsory search reports

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

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

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

Streamlined appeal procedure at the FPC

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

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

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

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

Reported by Martin WILMING

SUMMARY OF PUBLIC CONSULTATION

INDIVIDUAL SUBMISSIONS

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Transparency of how panels of judges are composed: Room for improvement

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The Control Committees (CC; ‘Geschäftsprüfungskommissionen’, GPK in German) of both the Council of States and the National Council recommend that the Federal Courts improve transparency about the formation of the panels that are handling the individual cases; see the press release of 24 June 2021 and the report of the CC and the underlying report of the Parliamentary Control of the Administration below.

Formation of panels at the FPC is governed by Art. 21 PatCA and Art. 7 PR-PatC. Even though e.g. language skills are not mentioned therein, this criterion is actually used in the formation of the panels.

Further uncodified criteria which are actually used are the relation between different cases as well as involvement in previous cases:

Accordingly, the CC’s report recommends that the Federal Courts, including the FPC, check and amend their Regulations, to bring them in line with what is actually done and to improve transparency:

The CC further mentions that even though the formation of the panels via two Excel lists is generally okay, it is not a system that is readily feasible to control the formation of the panels in a transparent manner. In particular the undocumented aniticipation of conflicts of interest is mentioned in the CC’s report. Further, the selection mechanism of the judges with a background in law is held «unclear», as well as the respective share of judges with a background in law or technology on a panel:

The CC recommends that the formation of panels be better documented, and that a report shall be made available both internally within the courts as well as to the CC:

In addition, it is recommended to include at least an abridged information of the public in the annual reports:

It will take a while for the Federal Courts to review these recommendations and to implement appropriate measures, in close cooperation with the Federal Supreme Court.

Reported by Martin WILMING

REPORT CC

REPORT PCE


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*** BREAKING *** Be prepared for patent term adjustments, to compensate for delays during prosecution

Reading time: 3 minutes

Case No. O2020_08/15 | Main hearing of 1 April 2021

The main hearing in this matter earlier today was highly interesting.

The ACME catalog
Acme Corp.

In brief, Acme Corp. asserts infringement of a European patent by Globex Corp. The tricky thing is that the patent had already been cancelled from the register at the end of its 20y term more than two years(!) before the alleged infringement took place.

Globex Corp.

Globex Corp. essentially contends that the complaint is simply an impertinence. What no longer exists cannot be infringed. Hank Scorpio, the CEO of Globex Corp., shouted out:

Where would we be?

But it appears to be not that easy. Acme Corp. essentially argued that it has been cheated out of several years of patent term because the patent was granted only more than 15 years(!) after the filing date. In Acme’s view, this demands for a term adjustment to compensate for the delay during prosecution through no fault of their own. Such term adjustments are granted ex officio in the U.S., and Acme argued that this was only fair.

We want this!

During a break, I had a quick chat with a person who prefers to not see his name on this Blog but who is knowledgeable of the current status of the draft of the forthcoming revision of the Swiss Patent Act; see this Blog here for further information on the draft bill. It appears that some wished for U.S.-style patent term adjustments (similar to 35 U.S.C. 154) during public consultation, which will indeed be included in the final draft of the revised Swiss Patent Act. Accordingly, I understand that we may see patents valid in Switzerland with terms reaching months, if not years beyond the 20y term. This is unprecedented in Europe, to the best of my knowledge!

Stay tuned for further details to be published soon. It may well be that the transitional provisions of the revised PatA turn out to be decisive for the case at hand. And others. Yours, maybe?

Reported by Martin WILMING

April Fool! 😂

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Next ‘Fireside Chat’ on Wed, March 31

As promised, I would like to invite you to the next fireside chat on Clubhouse! 👋

It’s supposed to become the interactive part of this Blog:

🔥 FIRESIDE CHAT #02

CH fireside chat #02

The rough agenda:

1 // I will provide a quick update on what has happened at the Swiss Federal Patent Court and the Supreme Court in patent matters; 15 min.

2 // Q&A, discussion and gossip; open end.

Besides patent litigation, I currently plan to briefly touch on G 1/21 and the role of the FPC as potential appeal authority in the PatA revision.

SAVE THE DATE

Wednesday, 31 March 2021, 7:00 pm CET

WILL YOU JOIN ME?

Join the chat here.

Note that Clubhouse is currentl available on iOS only, unfortunately. If you need an invite, please let me know.

/MW

Referral to the Enlarged Board of Appeal re video-conferencing: All you need to know for now

Reading time: 4 minutes

As reported by the IPKat, with reference to a note of Reddie & Grose on their website, a referral to the Enlarged Board of Appeal is currently in the making. The legality of oral proceedings conducted as video-conference will be looked at.

Note, however, that the referral has not yet been made as per today.

The docket to watch is EP 1 609 239. The parties had not consented to oral proceedings by video-conferencing, but they have nevertheless been summoned to a video-conference. The minutes of the oral proceedings of 8 February 2021 hold:

After deliberation by the Board, the Chairman informed the parties that the Board will refer a question to the Enlarged Board of Appeal. The decision will be given in writing.

The composition of the to-be-referring Board 3.5.02 of Chaiman Richard LORD has then been changed on 11 February 2021; Wilhelm UNGLER (legal member) has been appointed as an additional rapporteur besides Fabian GIESEN (technical member).

One of the parties had filed an auxiliary request by Email, apparently during the oral proceedings. Since the request was in German, I suspect that it was filed by the opponent / appellant. It losely translates as follows:

We hereby submit the auxiliary request to submit to the Enlarged Board of Appeal for decision the question whether oral proceedings pursuant to Art. 116 EPC may be replaced by a video-conference if the parties do not agree thereto.

(On the fun side: Does that mean that a video-conference had been okay if the main request had been granted?)

I don’t think that this will be the question finally being referred to the EBoA because it already assumes that a video-conference is something different than oral proceedings pursuant to Art. 116 EPC. This, in my perception, is already part of the problem to be finally resolved by the EPO.

Once the referral has actually been made, cases with parties being summoned to oral proceedings by video-conference without their consent will likely be stayed. This will concern quite a lot of cases. Accordingly, I would expect that the EBoA will pick it up as soon as possible, like G 2/19 (Haar vs Munich) which had been resolved in less than five months.

UPDATE 16 March 2021:

Decision T 1807/15 of 12 March 2021 (see below) refers the following question to the EBoA:

«Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?»

What is to be hoped for

I am a big fan of oral proceedings in person; see e.g. this Blog here.

Still, I feel it would be a disaster if the EBoA concluded that a whole lot of unsolicited oral proceedings by video-conference during the pandemic were illegal. What I do hope for though is that the EBoA paves the way back to oral proceedings in normal times / after the pandemic as we had been used to have them at the EPO: In person, at least for those who expressly do not consent with video-conferencing.

The best piece of research in this respect that I have seen by now is from Tilman PFRANG, available here.

Further, many submissions have been made during public consultation on the new Art. 15a of the Rules of Procedure of the Boards of Appeal that expressly provides for video-conferencing (at the discretion of the respective Board). Not even a summary of all the submissions is available to date, but quite some associations have made their submissions publicly available. This is a wealth of information on the issue:

If you are aware or come across further publicly available submissions, please let me know and I will include them here.

UPDATE 19 February 2021:

The (very brief) summary of responses to the online user consultation on Art. 15a has been published earlier today; see here.

Reported by Martin WILMING

T 1807/15 – 3.5.02

Interlocutory Decision of 12 March 2021

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Will you join the ‘Fireside Chat’ on Clubhouse?

Are you tired of only reading Blog posts and Tweets?

Are you missing the discussion, in particular in these pandemic times?

Then let’s have a chat on Clubhouse! 👋

Honestly, I am normally not an early adopter of social media stuff, but the live audio chat concept of Clubhouse is pretty appealing to me.

It’s supposed to become the interactive part of this Blog:

🔥 FIRESIDE CHAT

Fireside Chat
Fireside Chat

My current idea is roughly as follows:

1 // I will provide a quick update on what has been decided by the Swiss Federal Patent Court and the Supreme Court in patent matters; 15 min.

2 // Q&A, discussion and gossip; open end.

SAVE THE DATE

Wednesday, 24 February 2021, 7:00 pm CET

I am planning to have the Fireside Chat on a monthly basis, always on the last Wednesday of a month.

WILL YOU JOIN ME?