Tuesday, 26 January 2016

LCII Half-Day Conference: Regulating Patent “Hold-Up”?

Readers who share this blogger's view that the CJEU decision in the matter Huawei ./. ZTE (see e.g. here)  still leaves room for discussion will be pleased to learn that the LCII wants to offer this room in the next event:


Abstract: The patent hold-up theory has nurtured many policy developments in the past ten years. On the one hand, Standard Setting Organizations (SSOs) have been exploring changes to their licensing policies, in particular in relation to the commercial implications of FRAND pledges given by holder of Standard Essential Patents (“SEPs”). On the other hand, antitrust agencies and patent courts across the globe have been confronted with several waves of cases Those proceedings have generated a thick, diverse and somewhat inconsistent body of case-law on a wide array of topics, including the availability of injunctive relief, patent valuation, portfolio licensing, practicing and non-practicing entities, etc. This conference seeks to provide a 360° state of play on patent hold-up in contemporary antitrust and patent policy.

This Half-Day conference will take place in Brussels, on February 29th, 2016. The full Conference programme is available here, Registration here.

Speakers include the most prominent scholars, judges and advocate generals in the field such that the event will surely be beneficial to all those who attend.

Monday, 25 January 2016

Mock Trial in Munich - Chris Ryan reports

Solicitor Chris Ryan was so kind to report in the mock UPC trial which had been organized by EPLIT in Munich last Friday. 

The idea of the European Patent Litigators Association (EPLIT) to run a mock UPC trial based on the famous Improver v Remington litigation of the late eighties and early nineties struck me as a really interesting idea when I first heard the suggestion. It turned out to be a fascinating and highly educational experience when it was run last Friday (22 January) at the Sofitel Bayerpost Hotel conveniently close to Munich station. 
The Improver litigation did more than establish the “Improver questions” in English law for assessing equivalence ([1990] FSR 181). It led to a series of decisions around Europe, based on the same European patent and the same alleged infringement, in which judges reached very different conclusions on the question of whether a claim for a “helical spring comprising a plurality of adjacent windings” covered a solid rubber rod with slits cut into it, which was capable of performing the same task – pulling out hair when set up in an arcuate configuration and rotated at speed around its axis.

Will the arrival of the UPC repair the fault line in the European Patent system, which the Improver story so clearly identified? On the evidence of the mock trial it will do just that. The “mock” Local Division in Munich reached a decision on validity and infringement which took effect in every designated Member State albeit that it may take time to develop a body of interpreted law and procedure that is consistent across the territory of the EU and distinct from that of the individual Member States from which judges may be drawn.

The panel of judges consisted of Prof Haedicke (Oberlandesgericht in Düsseldorf), Mr Zigann (Landgericht in Munich) and Mr Van Walderveen (District Court in The Hague). They were joined by Mr Klein as Technical Judge (formerly of the Boards of Appeal of the European Patent Office). 
The patent proprietor was represented by Rainer Beetz (Sonn and Partner, Austria) and Leythem Wall (Finnegan Europe LLP, Great Britain). The defendant was represented by Marek Lazewski (Lazewski Depo and Partners, Poland) and Jan Stein (Ipracraft AB, Sweden). The case documents had been prepared by these representatives together with Markus Rieck (Fuchs Patent Attorneyes, Germany).

I found the main trial (in the afternoon) was slightly less interesting than the Case Management Conference which preceded it in the morning. The final conclusion was that the patent was valid and infringed. However, it was not the outcome that I found most interesting. It was the differences in approach adopted by advocates and judges and the manner in which the presiding judge ran the business of the trial.

On the first point, the debate on validity turned on inventiveness over two elements of prior art. It was not entirely clear (to me, at least) which of several available tests for determining inventiveness was being relied on at different stages of the debate between the judges and the advocates, or in the judges’ deliberation over their conclusion. Similarly, in respect of the infringement issue, all parties seemed to agree that two questions required to be asked by the judges but were unsure whether there was a third question and, if so, what it should be. I suspect that all the judges were deliberately staying within the comfort zone of the approach that would be adopted at each stage within their own domestic courts. Their approach certainly illustrated the challenge facing the UPC (at both first instance and appeal level) of establishing a body of jurisprudence over time which will be distinct from the law emanating from national courts. 
The second point that struck me was the power of the presiding judge in setting an agenda and then outlining each issue in some detail before inviting the parties’ advocates to address it. It may be, of course, that the stark contrast with the way in which a case would be conducted in London was accentuated by the artificiality and time constraints of a mock trial. And no doubt those familiar with EPO hearings will find the inquisitorial approach and management of the debate on each issue more familiar. It certainly led to a crisply efficient disposal of each element of the case and the dispute as a whole.
Firm management of the process and the emergence of national differences in approach were even more evident during the Case Management Conference.

The organisers of the event had tweaked some of the facts of the original case in order to create some interesting preliminary issues. Had the proprietor opted back into the exclusive competence of the UPC in time where the defendant had issued an application for a declaration of non-infringement in the English Court on the same day as that on which the application to opt back in was entered on the register (Rule 5.9 – opt out not permitted where “an action has been commenced before a court of a Contracting Member State …prior to the entry of the [opt back in] Application in the register…”). If it had, should the UPC proceedings nevertheless be stayed under the Brussels Regulation’ requirements to avoid multiplicity of proceedings. And if the proceedings were still on their feet after those two challenges did the Local Division have jurisdiction over the dispute, given that, first the only sales in Germany had been a couple made by a third party who had acquired the goods in Poland and on-sold them in Germany against the wishes of the defendant and, secondly, very substantial sales had been made in the UK. 
There was also an application at the Case Management Conference to strike out the claim of literal infringement because it was unarguable (application granted by the Rapporteur but reviewed at the main hearing, when the ruling was reversed) and the court required the claimant/plaintiff to amend the request for remedies (prayer for relief) by providing a great deal more detail as to the scope of the injunction sought. The amended version available at the main hearing tracked the language of the relevant patent claims in identifying which products would be covered and even included a photograph of the defendant’s product. The difference between the precision of drafting expected in, for example, the German courts was contrasted with the broad scope of injunction sought and granted in the English courts. In this case the German pattern prevailed, designed, it was said, so that a court bailiff called upon to enforce it would have no doubt as to whether a product he came across did or did not fall within the scope of the court order. 
Other issues touched upon included the language of the proceedings (English because it was one of the languages which the Local Division had designated), translation facilities at the main hearing, summoning of witnesses, the appointment of a technical judge and, in the light of his appointment, the need for any expert evidence (and in which field of technology), as well as security for costs.

Listening to the well-structured submissions on each of the issues raised, and then eavesdropping on the judges as they considered their decision, proved to be an extremely effective means of improving (gaining) familiarity with the relevant procedural rules. 
The judges helpfully paced both the debate with the advocates and their own deliberations to assist the audience in tracing each issue, and the decision made on it, back to the language of the current draft of the rules. 
Judges, advocates and organisers are to be congratulated on an extremely informative and interesting learning experience. Another success for the increasingly effective Association which brings patent attorneys together from around Europe in its continuing efforts to assist their preparations for the new court and to influence the way it will operate.

This blogger is very grateful for this report because he was unable to attend to the event himself.  The report confirms my impression form previous mock-trials that the degree of activity of the presiding judge in managing the discussion in the trial and asking questions is one of the aspects of procedureal law which is still entirely unharmonized.  Mock trials with international panels really give an impression on the clash of (legal) cultures we will be experiencing once the UPC is up and running.

Thursday, 21 January 2016

UPC Ratificatons: Finland has ratified, UK makes step forward

The number of states having ratified the UPC agreement is steadily increasing and has now reached nine (nine and a half?). According to the European Council website, Finland is the proud 9th signatory state to have deposited its ratification instrument on January 19th, 2016.

According to the available information (see e.g. here), Finland does not participate in the Nordic-Baltic Regional Division. However, no plans for setting up a local division have been published, either.

Moreover, the UK Government has published a draft Statutory Instrument (SI) for the ratification of the UPC agreement. The instrument raises fairly interesting issues, some of which have already been pointed out in the comments on a recent IPKat post on this issue. The interplay between the EPC, UPC-Agreement and the respective national SIs including the question which one would prevail in cases of conflict will surely be a formidable playground for academics, critics, judges and attorneys handling the first infringement cases. 

Supreme Court Agrees To Decide Proper Claim Construction Standard in IPR Proceedings

On January 15, 2016, the U.S. Supreme Court granted certiorari in a case involving the appropriate claim construction standard for patent claims challenged in an inter partes review proceeding before USPTO’s Patent Trial and Appeal Board (PTAB). Cuozzo Speed Technologies, LLC v. Lee, Case No. 15-446 (cert. granted Jan. 15, 2016).

Cuozzo Speed Technologies, LLC owns U.S. Patent No. 6,778,074, which claims, among other things, a speed display connected to a global positioning system device that displays a vehicle’s current speed and indicates when the speed exceeds the legal speed limit for the vehicle’s exact location. Garmin International, Inc. filed a petition for inter partes review (IPR) of certain claims of the ‘074 patent on September 16, 2012 – the first day that IPR proceedings were available under the Leahy-Smith America Invents Act. The PTAB construed the claims by giving each claim the “broadest reasonable construction in light of the specification of the patent in which it appears,” also known as the “BRI” standard, applying the USPTO rules for AIA proceedings. 37 C.F.R. § 42.100(b). In its final decision, PTAB ruled that three challenged claims were invalid as obvious.

Cuozzo appealed the result to the Federal Circuit. In a Feburary 4, 2015 divided decision, the court held that the BRI standard was appropriate. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015). The panel also held that the USPTO’s decision to institute an IPR proceeding was not appealable, either prior to or after the PTAB’s final decision. See 35 U.S.C. § 314(d) ([t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”). Cuozzo then filed a request for rehearing en banc.

In another split decision, the Federal Circuit declined en banc review by a thin margin. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1297 (Fed. Cir. 2015) (per curiam).Circuit Judge Timothy B. Dyk wrote an opinion concurring in the denial. Chief Judge Sharon Prost, joined by four other judges, wrote an opinion dissenting from the denial.

The principal point of disagreement on the court, and an issue to be considered by the Supreme Court on appeal, is the standard the PTAB should use to construe claims during AIA proceedings. The USPTO implemented the AIA’s post-grant provisions by promulgating rules requiring claims to be interpreted using the BRI standard. In federal court proceedings, on the other hand, claims are construed to have their “actual” meaning to a person skilled in the art based on the claim language, specification, prosecution history, and – occasionally – other extrinsic evidence.

In his concurring opinion, Circuit Judge Dyk argued that BRI was supported by the AIA’s legislative history, because Congress had been aware of the USPTO’s use of that standard for decades and the AIA legislative history is silent about requiring a different standard.

In her dissent, however, Chief Judge Prost argued that the AIA post-grant trial mechanism was a “new, court-like proceeding[,]” and thus it should use the same construction standard used in traditional litigation matters. She noted that the Federal Circuit has embraced the BRI standard only as a useful tool prior to patent issuance or during reexaminations or reissues, where the patentee has the ability to amend claims. Under the PTAB rules for IPRs, on the other hand, amendments are very limited.

The specific questions presented in the Supreme Court are:

1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Briefing will continue until late spring, with oral argument most likely in May.

Friday, 15 January 2016

The Non-Commutative Algebra of Inventive Step - T 1649/10

The decision T 1649/10 of the Technical Boards of Appeal raises the bar for the admissibility of an appeal under Articles 106 to 108 EPC and Rule 99 EPC. Rule 99 EPC relates to the "Content of the notice of appeal and the statement of grounds".

Rule 99(2) EPC stipulates: "In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based".

In the case at issue, the patent had been maintained in amended form (with added features from the specification) by the opposition division. Claim 1 as granted had been judged to lack inventive step starting from a document D10 as the closest prior art in combination with a document D4. In the grounds of appeal, the appellant argued that claim 1 as granted was indeed non-obvious starting from D4 as the closest prior art in combination with D10.  No reason why D4 would be a more appropriate starting point than D10 was given.

D10 combined with D4 or D4 combined with D10 - does it make a difference?

According to the Board, it does. The appeal was rejected as inadmissible because the reasons of the impugned decision (obviousness starting from D10) were not properly addressed. The claim as maintained by the opposition division was considered to lack clarity and the patentee having lost its status as appellant did not find a way to overcome this problem without colliding with the prohibition of reformatio in peius. The patent was completely revoked.

This following the decision T 2077/11 , this decision highlights the importance to specifically address the reasons given in the impugned decision and to not only re-iterate one's own view of the case. While I personally think that this decision overstresses  the requirements of Rule 99(2) EPC, it should serve as a warning when drafting grounds of appeal.

Thursday, 7 January 2016

12 years is excessive - T 0823/11

The appeal case T 0823/11 lies from the (not properly reasoned) decision of the Examining Division posted on 30 September 2010 to refuse a European patent application with the filing date of 15.05.1996, which has entered the European Phase on 15 December 1997.

The duration of 12 years is considered to be a substantial procedural violation justifying the reimbursement of the appeal fee. According to point 2 of the reasons:
In the opinion of the Board, the delays cannot be justified by the particular circumstances of the case. The duration of the first-instance proceedings of more than twelve years after entry into the European phase must be regarded as excessive. According to decision T 315/03, even a shorter delay of ten years in a much more complex opposition case amounted to a procedural violation (points 15.5 and 15.6 of decision T 315/03 which was published only in an abbreviated form in OJ EPO 2006, 15). The Board in that case found that such a delay was not "within a reasonable time" and therefore infringed Article 6(1) of the European Convention on Human Rights (ECHR).
This is reasoning is remarkable because it is one of the rare cases referring to the ECHR and the delay has some similarities with the purported delay of up to 15 years for labour cases against the EPO handled by the Administrative Tribunal of the International Labour Organisation (ILOAT).

The additional delay of 5 years for the 2nd instance is not mentioned or justified. Rather, the case is remitted to the examining division, not without noting that "...  the Examining Division should expedite its final examination of the remitted case." 

Given that the Patent - once Granted - will expire in May this year, the reimbursement of the appeal fee will be a poor consolation for the applicant.

Tuesday, 5 January 2016

Reform of Boards of Appeal - Advance to Go

Back from his the holiday break, this blogger was eager to learn about the fate of the proposal for the reform of the technical Boards of Appeal presented at the pre-Christmas meeting of the EPO's administrative council which had been held on 16 and 17 December 2015 in Munich. The proposal had been outlined in the document CA/16/15 and had been the subject of a user consultation, the results of which (as interpreted by president Batistelli) had been published here. Quite a few rumors had been spread in advance and the communiqué has now been published on the EPO website.

As for the Reform of the Boards of Appeal, the communiqué contains the following statement (emphasis added):
The Council then had an exchange of views on the envisaged structural reform of the EPO Boards of Appeal. It mandated its Board 28 to elaborate guidelines to serve as a basis to the President for the drafting of concrete proposals to be submitted for decision to the Council possibly at its March 2016 meeting.
In my understanding this means that the proposal CA/16/15 has been rejected entirely rather than being remitted for entering modifications. Further, it is remarkable that the AC considers it to be necessary to elaborate guidelines to serve as a basis to the President for the drafting of concrete proposals rather than relying in the president's capacity to draft proposals alone.

Tuesday, 22 December 2015

Due Care and Annuity Reminders

The decision T942/12, which has been discussed by the IPKat here, relates to the “due care required by the circumstances to be proven when requesting restitutio in integrum.

While in the good old times, annuities have been paid (and actually had to be paid) by professional representatives, this business has now been largely conquered by specialized firms. The professional representatives then receive a notice saying “the annuities will be paid through other channels”, “you are no longer responsible for the annuities” or the like. While sending annuity reminders and actually paying the renewal fees are basically two different things, the question of reminders is rarely addressed explicitly. It is, however, generally considered to be implicit that the representative is not expected to send annuity reminders where it is clear that the payment is effected via other channels. In any case, the client would clearly not pay for such reminder services and would feel bothered and confused by receiving such reminders rather than appreciating the diligent service of his professional representative.

The above understanding is more or less common ground for reminders sent before the due date of the renewals, the situation gets complicated when it comes to official notifications indicating that the renewal fee can still be paid with surcharge and/or loss of rights communications or decisions received after the lapse of the period for payment with surcharge. The due diligence requires the representative to forward these communications unless the patentee explicitly says that he does not want this. Neither the instructions to “abandon”, to “let lapse” or to “withdraw” implies that the applicant or patentee does not wish to be kept updated on the available legal remedies for the case that the instruction was erroneous, unintentional or otherwise misconceivable. Unlike in the case of “ordinary” annuity reminders, the professional representative is expected and indeed obliged to forward official notifications drawing attention to the possibility to pay the renewal fees with surcharge or notification of a loss of right even in those cases where he thinks that the non-payment of annuities was intentional (which is often unknown to the representative) unless the client has explicitly waived the receipt of these notifications.

The duty to monitor annuity deadlines and to send reminders is considered to be transferred to the party entrusted with the effectuation of the payment whereas the duty to forward official communications and to inform available legal remedies remains with the professional representative.

The situation can of course been more complicated in cases where the ownership of the patent and/or and intermediate foreign professional representative who had sent the original instructions has changed. If the transfer of the patent is not registered, the professional representative might even have been informed about it. The waivers to receive certain information expressed by the original patentee and/or by the original foreign representative might not be valid for the new representative or patentee and might not reflect the desired services of the new patentee or representative.

Against this background, most of the patent law firms tend to forward communications received after non-payment of the annuity in case of doubt. A decision not to forward such communications would require detailed analysis of the previous instruction including the file history as described above, which would be more complicated than simply forwarding the communications by far. It is, however, difficult to charge a client for this service, in particular in cases where the responsibility for the payment of annuities has been transferred or where the right to receive this communications has been explicitly waived.

For important deadlines in general, the safe receipt of notifications of deadlines should be confirmed somehow and a series of reminders should be sent in cases of doubt.  Does this apply to cases where the professional representative is formally not responsible for the payment of annuities even if this might be perceived as bothersome in a case where the client has intentionally abandoned the protective right?  Or is the degree of due care required somehow lowered in this specific case?

The decision T942/12 has to be seen in this context. The core part of the decision goes as follows:

The renewal fee for the fifth year fell due by 31 July 2007 and was not paid. The notice drawing attention to Article 86(2) EPC dated 4 September 2007 was sent to the European representative of the applicant, Page Hargrave (PH). PH forwarded this notice to GH on 7 September 2007. GH states they have no record of ever having received this notice. PH took no further action with respect to the renewal fee as it had been instructed by letter of 9 September 2005 that it "was not required to maintain renewal fee reminder records or attend to the payment of renewal fees". ....

If a European representative is expressly instructed that he is not required to monitor the payment of renewal fees, the duty of due care does not involve that he nevertheless does so. It cannot be expected that the European representative monitors renewal fee payments at his own expense (he will not be able to charge fees for actions he is to refrain from according to his instructions). Furthermore, sending reminders against instructions may irritate the instructing party and may impair the relationship with the client. The client may have good reasons for giving such instructions, e.g. to avoid receiving reminders from different sources that will lead to additional work and expense for him. Reminders from different sources can also be a source of confusion and thus lead to mistakes. 
The present case therefore differs from the case law where it was held that even if the renewal fee was paid by someone else, the European representative remained responsible in the procedure before the EPO, and had to take the necessary steps to ensure payment (see Case Law of the Boards of Appeal, 7**(th) edition 2013, III.E.4.5.2 b)), as in none of those cases the European representative had expressly been instructed not to monitor renewal fees.

The Board therefore concludes that the duty of care of PH involved the forwarding of the notice drawing attention to Article 86(2) EPC to GH, not however checking whether GH indeed received the notice and took the appropriate action (emphasis added).

This blogger welcomes this important decision because it accounts for the complexity of real life circumstances within which professional representatives have to exercise their due care rather than imposing unrealistic requirements.

Friday, 18 December 2015

13th meeting of the UPC Preparatory Committee

The UPC Preparatory Committee has published its report on its 13th meeting on its website. Alexander Ramsay (SE), the previous Vice Chair of the Committee was elected Chair and Louise Åkerblom (LU) was elected to replace him as Vice Chair. An agreement on the Meditaion Rules was reached. According to the knowledge of this blogger, these Meditaton Rules have bot yet been published. 

A proposal for court fees and the ceiling for the recoverable costs received "favourable comments" but still needs some fine-tuning and there is "emerging consensus" on the Protocol on Privileges and Immunity of the UPC.

Further issues on the schedule for the next meeting are
  • the Rules governing the Registry
  • the Rules of the Advisory Committee,
  • the Service Regulation and
  • the design of the judicial recruitment and training process, wherein the latter will be dealt with by a working group in a highly prioritised work-stream.
The next meeting of the Committee will take place 24 & 25 February 2016.

Alexander Ramsay further shares this and some other information in an interview with Euroforum.

Thursday, 17 December 2015

Unified Patent Ready to Go!

The EPO Select Committee reports on its 18th meeting held on December 15, 2015 in Munich wherein the secondary regulation framework for the Unified Patent has been adopted.

According to the press release of the EPO:

On proposal of the European Patent Office (EPO), the Select Committee which represents the EU member states participating in the new Unitary Patent, has formalised today a series of agreements into a complete secondary legal framework comprising the implementing rules, budgetary and financial rules, the level of the renewal fees and the rules concerning the distribution of the renewal fees between the EPO and the participating member states.

Welcoming these landmark decisions, EPO President Benoît Battistelli said, "This is a hugely significant occasion for the European patent system. With the adoption of these rules today, the preparations for the unitary patent are complete. We are now legally, technically and operationally ready to deliver the unitary patent. The only remaining step is the opening of the Unified Patent Court and the finalisation of the ratification process at national level. We hope this will happen in 2016 and we are convinced that it will boost innovation in Europe and will be beneficial for the European economy, especially for European SMEs."

A necessary pre-requisite for the Unitary Patent system to start will be the existence of the Unified Patent Court (UPC) in which any such Unitary Patents can be challenged or enforced. Once thirteen states, including France Germany and the UK, have ratified the Treaty establishing the UPC, both the Court and the Unitary Patent system will come to life. So far eight states, including France, have ratified, with several more expected to ratify shortly.

Recent experience in other political fields shows that agreement on distribution keys is not an easy task among European Countries and this blogger is relieved that the distribution of the renewal fees has not become a stumbling block.

Thursday, 26 November 2015

When I founded this blog with some colleagues from Olswang LLP back in 2008, principally as a means of lobbying for reform of the England and Wales Patents County Court, I had no idea that it would still be going seven years later, with international content, over 1,500 email subscribers and nearly 900,000 pageviews. 

PatLit has been a lot of fun, and occasionally a good deal of very hard work.  Thanks so much for giving me the chance to share ideas, information and thoughts with you.

At midnight tonight I retire, leaving the running of PatLit to my colleagues. Do please give them your support. If you are interested in participating in this weblog, do please contact Michael Thesen at thesen.michael@googlemail.com and let him know.

Monday, 23 November 2015

Mock trial under UPC 18th draft Rules: this will take some pluck ...

EPLIT, the European Patent Litigation Association, is running a mock trial under the recently-published 18th draft of the Rules of Procedures for the Unified Patent Court. The details look like this:
On 22 January 2016, EPLIT will run a mock-trial under the 18th draft of the Rules of Procedure for the Unified Patent Court (UPC). The case to be tried is between Improver Corporation and Remington Consumer Products and concerns a depilatory device, better known as the "Epilady" case. This case was litigated in the late 1980s and early 1990s before various national courts in Europe with drastically different outcomes. For that reason it serves as a reminder of why further harmonization of patent litigation in Europe is a worthy cause. The mock-trial will be staged before the Local Division of the UPC in Munich.

The original Epilady
The panel of judges will consist of Prof Haedicke (Oberlandesgericht in Düsseldorf), Mr Zigann (Landgericht in Munich) and Mr Van Walderveen (District Court in The Hague). The panel has been extended with a technical judge, Mr Klein (formerly of the Boards of Appeal of the European Patent Office). The patent proprietor (Improver) will be represented by Rainer Beetz (Sonn and Partner, AT) and Leythem Wall (Finnegan Europe LLP, GB). The alleged infringing party (Remington) will be represented by Marek Lazewski (Lazewski Depo and Partners, PL) and Jan Stein (Ipracraft AB, SE).

The day will begin with a case management conference (CMC) in the morning, and the afternoon will comprise of the oral hearing. This will be followed by a questions and answers session for the audience.

The event will take place in the Sofitel Bayerpost, Bayerstrasse 12, Munich.

The admission fee is EUR 395 for EPLIT members and EUR 495 for non-EPLIT members. This will include lunch, as well as coffee and other refreshments and snacks throughout the day, and a drinks reception after the proceedings have con­cluded.
Application form here. Please email it to the EPLIT Secretariat here.

Thursday, 19 November 2015

EU Observatory survey on cost of IP infringement: can you help?

The European Observatory on Infringements of Intellectual Property has let it be known that it is currently undertaking a project that is designed to assess the cost of infringement of intellectual property rights to business and government.  Presumably the cost, in this instance, includes the cost of dispute resolution and, in particular, patent infringement litigation.

The Observatory has contracted market research company GfK to carry out a survey on its behalf for this purpos.  The survey itself is a simple questionnaire which is largely comprised of multiple choice questions. It can be accessed here.  It is addressed to a sample comprising the following Member States, in their own language(s): Belgium, Denmark, Germany, Spain, France, Italy, Lithuania, Hungary, Netherlands, Austria, Poland, Portugal, Sweden and the United Kingdom.

The closing date for responding is 4 December 2015, which is not very long away.  If you, your clients or your professional representatives can be persuaded to participate, this would be much appreciated

Wednesday, 11 November 2015

Deciphering Huawei vs. ZTE: A Paper

The intervention of Nicolas Petit at the Training course for technical judges atthe UPC organized by the CEIPI had been discussed here some time ago. Nicolas has now published his observations on the decision Huawei vs. ZTE, which are available for download here and are interesting to read.

Among other points, Nicolas observes that upstream licensing entities are immune against the antitrust defence because he concern of the CJEU lies in the exclusion of competitors, not in the exploitation. This means that the problems of hold-up, reverse hold-up and of FRAND setting are addressed only in terms of procedural courtesy obligations among parties competing on same market and that the question of substantial pricing is left open or left to the national courts.

Monday, 9 November 2015

BGH on Patentability of Mathematical Methods - "Flugzeugzustand"

The decision BGH X ZR 1 /15 "Flugzeugzustand" relates to the patentability of a mathematical method used in the context of monitoring airplane machinery. A rough (and non-official) translation of the headnote is as follows:
a) In view of §1 par. 3. Nr. 1 PatG, mathematical methods are patentable only when they contribute to the solution of a specific technical problem with technical means.

b) A mathematical method can be considered non-technical only when it does not have, in the context of the claimed teaching, any relation to the purposeful use of natural forces.

c) A sufficient relation to the purposeful use of natural forces exists when the mathematical method is used for the purpose of obtaining more reliable information on the state of an airplane using the available measurement data to thereby influence the functioning of the system used for detecting that state. 
d) Subject-matter which is novel and based on an inventive step cannot be considered non-patentable only because it does not offer any recognizable advantage over the prior art.
The decision clarifies that the exception of §1 par. 3. Nr. 1 PatG has to be interpreted very narrow and that even a remote relation to a tangible technical device ("the purposeful use of natural forces") is sufficient.

Letter d) highlights an interesting contrast between the German case-law and the case-law of the technical boards of appeal, where a technical advantage is sometimes required.