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NEWS
(July 2008)
The German implementing law of the European Enforcement Directive (2004/48/EC) comes into force on September 1, 2008
The long awaited law which provides considerable improvements for the holder of intellectual property rights (see our report of April 2008) comes into force on September 1, 2008.
(July 2008)
Italian Torpedo misses its target
The Milan High Court has rejected a declaratory action claiming non-infringement of a European patent in several designated member states. The claim request was directed to a declaration of non-infringement “to the extent that the patent could be valid partially or totally”. The court in Milan was of the opinion that this claim request involved questions regarding the validity of the European Patent for which it was not competent.
(June 2008)
The Enlarged Board of Appeal of the European Patent Office will review a Stem Cell Case
On June 24th and 25th 2008 the Enlarged Board of Appeal of the European Patent Office will review a case concerning a patent application which describes a method by which primate embryonic stem cells derived form an embryo can be maintained in vitro for a long period of time without losing their potential to differentiate into any cell of the body. One of the main reasons for to refuse the application was that the disclosed method of obtaining stem cells used as the starting material a primate - including human - embryo which was destroyed in the process. The Enlarged Board of Appeal now has to clarify open legal points regarding the patentability of human embryonic stem cells under the European Patent Convention.
(June 2008)
The European Court of Justice decides about the use of a trademark in the frame of comparative advertisement
The company "O2" is owner of a trademark showing the logo of light bubbles in a blue fluid. A competitor has used a confusingly similar logo for the same goods and services, however, in the frame of a comparative advertisement. The European Court of Justice (C-533/06) has decided on June 12. 2008 that the proprietor of a registered trademark is not entitled to prevent the use, by a third party, of a sign identical or similar to his mark, in a comparative advertisement which satisfied all the conditions, laid down in art. 3 a (1) of the directive 84/450, under which comparative advertisement is permitted.
(June 2008)
The German Federal Supreme Court denies infringements of the trademark "POST"
In two decisions, the German Federal Supreme Court has rejected actions of "Deutsche Post AG" against competitors. The plaintiff is owner of the trademark "POST" for, between others, the transportation and service of letters and packages. The competitors are using "City Post" and "Die neue Post" as trademark and company name respectively. The German Federal Supreme Court has left the question open as to whether there is a likelihood of confusion between the trademarks and company names. The court concluded that the competitors are using "POST" only in a descriptive manner for their services (Art. 23 No. 2 Trademark Act).
(May 2008)
The German Federal Supreme Court decides about trademark infringements in Internet-Auctions
The German Federal Supreme Court decided that the provider of an Internet platform is liable for trademark infringements committed by offering parties. The trademark owner has to substantiate and to bring the evidence that the infringing products are offered on the internet platform in a commercial manner and not for private purposes. A trademark infringement, however, is given even if it is specifically mentioned in the offer that the product is faked and not an original product.
(May 2008)
The implementing law of the European Enforcement Directive (2004/48/EC) passes the German Federal Counsel
On May 23, 2008, the law for ameliorating the enforcement of intellectual property rights passed the Federal Counsel. Now the way towards an implementation of the European Enforcement Directive (2004/48/EC) in Germany is free. If the law is executed by the Federal President and pronounced in June, 2008, it can come into force on August 1, 2008.
(April 2008)
Germany is going to implement the European Enforcement Directive (2004/48/EC)
On April 11, 2008, the law concerning the implementation of the Enforcement Directive has passed the German “Bundestag”. It is to be expected that this law will pass the German “Bundesrat” as well and will come into force soon. The following key points are worth noting: The Patent Act, the Utility Model Act, the Semiconductor Protection Act, the Copyright Act, the Design Patent Act and the Plant Varieties Protection Act are in parallel and almost identically adapted to the requirements of the Enforcement Directive. The information rights which an IP owner has against third parties such as internet providers are ameliorated. In case of an infringement which is committed in a commercial manner, the IP owner has a right to be informed about the infringement situation against third parties. If the IP owner can show a sufficient likelihood of infringement, he/she has claims against the infringer which are directed to the inspection of possibly infringing items or the presentation of documents. These claims can be enforced by means of a preliminary injunction and the court can take the measures which are necessary to guarantee confidentiality. Furthermore, provided that the principle of proportionality is respected, the infringer can be obliged to remove infringing goods from the distribution channel. Last but not least, the IP owner has the option that a court ruling against an infringer is being published.
(March 2008)
Change in rules on national search reports for CTMs
A change in the rules covering applications for Community Trade Marks (CTMs) will make national searches optional from 10 March, 2008. National search reports will be produced only on request of the applicant under an all-or-nothing principle, whereby searches will be done for a separate fee in all participating member states of the EU. Community search reports and warning letters will continue to be delivered as before. The request for national searches must be made when the application is filed. For trade marks with a filing date prior to 10 March 2008, the “old” system will apply.
(February 2008)
The London Agreement will enter into force on May 1, 2008
European patents in respect of which the mention of grant was published after May 1, 2008 fall under the London Agreement, having the consequence that the translation requirements are considerably lowered. The translation requirements according to the London Agreement are basically laid down in Article 1 of the Agreement and can be summarized as follows: Any state party to this Agreement – on February 5. 2008: Germany, France, Island, Hungary, Latvija, Liechtenstein, Luxembourg, Monaco, Netherlands, Slovenija, Suisse and the United Kingdom - having an official language in common with one of the official languages of the European Patent Office (English, German, French) shall dispense with the translation requirements provided for in Article 65 (1) of the European Patent Convention. This means in practice that for those contracting states a translation of the specification is no longer required. Contracting states of the London Agreement which have no official language in common with either English, German or French shall dispense with the translation requirements provided for in Article 65 (1) of the European Patent Convention if the European Patent has been granted in the official language of the European Patent Office prescribed by that state or translated into that language and supplied in accordance with Article 65 (1) of the European Patent Convention. In practice, this means that a full translation of the specification in the national language is only required if the patent is not available in the EPO language designated by the country concerned. It is to be expected that many contracting states of the London Agreement having neither English nor German nor French as the official language will designate English. In this case, a translation of the patent in the national language of that country is only necessary if the patent is not available in English. It should be noted that, according to Article 2 of the London Agreement, in case of dispute, an alleged infringer, a court or a quasi-judicial authority can require a full translation into its official language.
(January 2008)
The European Patent Office increases several fees
On December 14, 2007, the Administrative Council of the European Patent Organization decided to increase several fees in two phases: As of April 1, 2008, several fees will be increased. Click here to download a schedule comparing the applicable fees before and after April 1, 2008. The fees concerned are, e.g. the claims fee; for the 16th and each subsequent claim, EUR 200.00 will be due. In a second phase, some of the fees will be modified or increased as of April 1, 2009. For example, an overall designation fee of EUR 500.00 for one or more designated contracting states will be due from that date, the increase of the claims fee concerns the 51st and each subsequent claim for which EUR 500.00 will be due.
(December 2007)
Croatia to enter the European Patent Organization as of January 1, 2008
The European Patent Convention in its revised version will enter into force for Croatia on January 1, 2008. As of that date, the European Patent Organization will comprise the 34 member states: Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, the Netherlands, Norway, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom. The already existing extension agreement between the European Patent Organization and Croatia will only continue to apply to European and International applications filed prior to January 1, 2008 and the European patents granted in respect of such applications. It will not be possible to retroactively designate Croatia for applications filed before January 1, 2008. However, upon request of the applicant, patent applications filed in December 2007 can be given the filing date of January 1, 2008.
(November 2007)
Amendments to the German Copyright Act will come into force at the beginning of 2008
As of January 1, 2008, amendments to the German Copyright Act will come into force. In the future it will be possible for creators of any kind of copyright-protected work to conclude a contract regarding forms of use which are not even known at the point in time when the contract is concluded.
(November 2007)
Undefined cease and desist action not admissible in Germany
The German Federal Supreme Court decided that a cease and desist action directed against the future publication of photos which are “essentially similar” to photos, the publication of which was illegal in the past, is not admissible. According to the German Federal Supreme Court, the question as to whether a cease and desist claim regarding photos is justified or not requires the balancing of interests between the interests of the public to be informed on one hand and the interests of a sufficient protection of privacy on the other hand. This balancing of interests cannot be done as long as the photos are not even in existence.
(October 2007)
European Union to join the Hague System of Industrial Designs
As of January 1, 2008, the European Union will join the System for the International Registration of Industrial Designs. The owner of an industrial design can, under this system, obtain protection in several countries by simply filing one application with the International Bureau of WIPO in Geneva. At the beginning of 2008, the European Union can be designated, which will facilitate design protection within the European Union and reduce costs.
(September 2007)
The London Agreement expected to enter into force in the first half of 2008
The goal of the London Agreement is to ease the translation requirements for European Patents and to thereby reduce translation costs. The signatory states will no longer demand a translation of the complete patent in their national language. Instead, a translation of – only – the patent claims will be sufficient. After the French government has authorized the ratification of the London Agreement, the Agreement is expected to enter into force in the first half of 2008.
(September 2007)
EPC2000 - The Top Ten Changes
The EPC2000, and in particular its implementing regulations, contain a fairly large number of amendments. This is a brief summary of the top ten changes, from the many changes that are to be expected under the EPC2000, coming into force on December 13, 2007.
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(September 2007)
The German Higher Regional Court Düsseldorf decides about the relevance of unfair competition in the internet
The Higher Regional Court Düsseldorf decided that in the event that a webpage, the contents of which violate the unfair competition act, has been shut down, the still possible access to the webpage via search engines in a complicated manner is no sufficient basis for further unfair competition claims.
(August 2007)
The German Federal Supreme Court decides about accounting obligations after trademark infringement
In deviating from its earlier case law, the German Federal Supreme Court decided on July 19, 2007 in its decision "Windsor Estate" under case no. I ZR 93/04 that the accounting obligations of a trademark infringer are time wise not limited by the first infringing action which has been proven.
(August 2007)
The German Federal Supreme Court decides about the exhaustion of trademark rights
The German Federal Supreme Court came to the result under case no. I ZR 63/04 that trademark rights are exhausted with regard to goods which have been given by the trademark owner to a third party within the European Union for advertisement purposes (in this case: perfume samples). The trademark owner can no longer prevent the further distribution on the basis of his trademark rights according to Section 24 (2) German Trademark Act.
(July 2007)
The European Patent Office stops standard and special search services
As of September 1, 2007, the European Patent Office will cease to perform standard and special search services. However, search services which have already been undertaken will be completed.
(July 2007)
The Enlarged Board of Appeal of the EPO issues Decision G1/06 clarifying the legal situation regarding filing and amending of divisional applications
The Enlarged Board of Appeal of the EPO confirms the established practice regarding filing of divisional applications and rejects attempts to restrict this practice as suggested by earlier Board of Appeal decisions.
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(June 2007)
Norway to accede to the EPC
The Norwegian parliament has decided that Norway becomes a member of the European Patent Organization with the beginning of next year. Thus, Norway is now expected to deposit the instruments of ratification and to become a member at the start of 2008.
(June 2007)
The Higher Regional Court Hamburg decides about the Presumption of Urgency and "Forum-Shopping"
In its decision of December 6, 2006 (-5 U 67/06-) the Higher Regional Court Hamburg has decided that the presumption of urgency according to article 12 par. 2 Unfair Competition Act is reputed if the plaintiff is abusing legal rights by trying a “Forum-Shopping”. According to the Court, the plaintiff is thereby showing that he is not really interested in a decision about his claims within short term.
(May 2007)
German Federal Supreme Court decides about implied license
In a decision, the German Federal Supreme Court decided that the delivery of a database containing relevant data for a patent protected method, by the patentee or by a licensee of the patentee to third parties has the meaning of an implied license for the buyers to use the patent protected method accordingly. This applies at least as long as contradicting commitments are lacking.
(May 2007)
Italy re-introduces filing and maintenance fees for patents
The Italian government has decided to re-introduce fees for Italian and European patents by a decree dated April 2, 2007.
(April 2007)
European Parliament for better protection of intellectual property rights
On April 25, 2007 the European Parliament decided to support the proposal of the Commission regarding a regulation concerning the punishment for infringement of intellectual property rights. First of all, the national laws shall be harmonized with regard to the possible sentence. The proposal concerns primarily copyrights, design rights and trademark rights, but, however, not patent rights.
(April 2007)
German Parliament discusses the “Enforcement Regulation”
On April 26, 2007 the German Parliament treated the draft for the implementation of the “Enforcement Regulation”. According to parliament, claims directed at the rendering of an account of third parties require a court order. Furthermore, the damage calculation on the basis of a doubled ordinary license fee has been refused.
(April 2007)
The German Federal Supreme Court decides about damage calculation in unfair competition cases
In its decision of September 21, 2006 (I ZR 6/04) the German Federal Supreme Court ruled that the calculation of the infringer’s profit in unfair competition cases (slavish copying), follows the same principles as in cases based on the infringement of intellectual property rights. In the framework of infringer’s profit calculation, only costs are deductible which are clearly and directly related to the infringing products.
(March 2007)
The Federal Supreme Court in Germany does not follow the case law of the EPO regarding second medical use claims
In its decision Carvedilol II the Federal Supreme Court does not follow the liberal practice of the EPO regarding allowability of second medical use claims. In its decision Carvedilol II (X ZR 236/01) the Supreme Court is of the opinion that treatment steps, like the administration of a medicament in a certain dosage, cannot be used for delimiting a second medical use claim over the prior art.
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(March 2007)
Committee on Legal Affairs finds EPLA (“European Patent Litigation Agreement”) in contradiction to European Law
The committee on legal affairs which consults the European Parliament and acts for it as a representative before courts has found in an interim legal opinion the European Patent Litigation Agreement to be in contradiction to European Law. The committee is of the opinion that EC Member States are not entitled on their own to conclude that Agreement.
(March 2007)
The German Federal Supreme Court decides about supplementary protection under Unfair Competition Law
In its decision I ZR 270/03 (“Stufenleitern”), the German Federal Supreme Court ruled that an unlimited cease and desist order to distribute, which is based upon claims for supplementary protection under Unfair Competition Law aspects, namely confusion about the origin of products and passing off, is only justified concerning unfair competition aspects which are given in the specific distribution action.
(February 2007)
US Priority Documents no longer required for European Patent Applications
According to a decision of the President of the European Patent Office dated January 9, 2007, the applicant need no longer supply priority documents if the earlier application is a (provisional or non-provisional) US patent application. This will apply for all new EP applications filed on or after January 16, 2007, or for all international PCT applications entered into the regional EPO phase after that date.
(February 2007)
The Court of Justice of the European Communities Decides Against Trademark Infringement and in Favor of Toy Car Manufacturer
In the case C-48/05, the Court of Justice of the European Communities ruled that the trademark of the car manufacturer Adam Opel AG, which is not only protected for cars, but also for toys, is not necessarily infringed by a toy car manufacturer distributing toy cars displaying the Opel logo. According to the Court, it is decisive whether the application of the Opel logo on the toy cars has a negative impact on the function of the trademark.
(January 2007)
Malta accedes to the European Patent Convention
The European Patent Convention will enter into force for Malta on 1 March 2007. European patent applications filed on or after 1 March 2007 can include the designation of this new contracting state. It will not be possible to designate Malta retroactively in applications filed before that date.
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(December 2006)
The German Federal Supreme Court decides about Metatags conflicting with Trademarks and Company Names Rights
In a recent decision, the German Federal Supreme Court concluded that the use of a “Metatag” (i.e. a key word for an Internet search engine, here: “Impuls”) by a non-authorized person can constitute an infringement of a company name right.
(November 2006)
The German Federal Supreme Court decides about the requirements of a proper identification reference for suppliers on the Internet
In a recent decision, the Federal Supreme Court has decided that an identification reference can be in compliance with the legal requirements even if it is only accessible via two links. It is neither required that the identification reference is accessible on the starting page, nor is it required that the identification reference inevitably shows up during the process of placing an order.
(October 2006)
The German Federal Supreme Court decides about Terms for Claiming a Service Invention under the Employees’ Inventor Act
In a recent decision the German Federal Supreme Court ruled that despite the lack of a proper announcement of the service invention by the employee’s inventor, the deadline for claiming the employee’s invention, which has to be respected by the employer, starts with the application of the intellectual property right. It is a landmark decision because it is based on the consideration that the time limit starts in general as soon as the employer has received all the necessary information.
(October 2006)
The German Federal Supreme Court decides about Statements concerning Purpose, Effect or Function in a Patent Claim as well as the Binding Effect of Declarations in Opposition or Nullity Proceedings
A recent judgment of the German Federal Supreme Court says that the purpose, effect or function-related statements in a claim of a devised patent may limit the scope of protection. Furthermore, the judgment says that statements made in opposition or nullity proceedings toward the other party may even be of relevance under the aspect of good faith if they are not documented in the decision.
(October 2006)
The German Federal Supreme Court Strengthens the Information Rights of a Plaintiff in Patent Infringement Proceedings
In a decision of August 1, 2006 (X ZR 114/03), the Federal Supreme Court ruled that the production of documents or other evidence can be ordered according to § 142 Code of Civil Procedure, if this is suitable and necessary for the clarification of the facts and if this is reasonable for the debtor of this production. As a reason for the order to produce documents, it may be sufficient that the use of the subject matter of the intellectual property right is likely.
(September 2006)
The German Federal Supreme Court decides about the preconditions for protection regarding utility models as compared to patents
In its decision of June 20, 2006 (X ZB 27/05), the German Federal Supreme Court decided that the same criteria are applicable for the assessment of an inventive step as a precondition for a utility model as for the assessment of an inventive step as a precondition for a patent.
(August 2006)
Malaysia becomes PCT Member State
On May 16, 2006 Malaysia became a PCT Member State. PCT applications which have been filed on or after August 16, 2006 can choose Malaysia as a designated country. Further information is available on the WIPO homepage as well as from the Intellectual Property Corporation of Malaysia.
(July 2006)
The European Court of Justice has restricted the possibilities of "Forum Shopping" for patent infringement actions in Europe
In two decisions of July 13, 2006 (C-4/03 and C-539/03) concerning the Brussels Convention, the European Court of Justice has clarified the provisions of Article 16 and Article 6 concerning jurisdiction. The decisions have the result of a considerable restriction of “Forum Shopping”.
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(July 2006)
Changes in the Opposition Proceedings Against German Patents as of July 1, 2006
As of July 1, 2006, a few changes are in force concerning opposition proceedings against German patents. The most important are the following: The German Patent and Trademark Office has – again – jurisdiction over oppositions. The jurisdiction of the German Federal Patent Court, which was temporarily given, remains only for oppositions that have been filed before June 30, 2006. An oral hearing will take place upon request of a party. During opposition of a patent it is no longer possible to file a divisional application. In order to accelerate the proceedings, it is possible, under specific circumstances, that the Federal Patent Court will decide about the opposition instead of the German Patent and Trademark Office. With the exception of the rules concerning jurisdiction (German Patent and Trademark Office / Federal Patent Court) the changes are applicable even for oppositions which were pending before July 1, 2006.
(June 2006)
New Referral to the Enlarged Board of Appeal at the EPO concerning the patentability of embryonic stem cells
In case T 1374/04 of a Technical Board of Appeal at the EPO several questions concerning the patentability of claims directed to embryonic stem cells were forwarded to the Enlarged Board of Appeal. As a consequence of the this Referral to the Enlarged Board of Appeal, it may well happen that patent applications pertaining to embryonic stem cells will be suspended from further examination until the Enlarged Board of Appeal has decided upon several questions.
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(June 2006)
German Federal Supreme Court Allows Utility Model Protection for Use Claims
The German Utility Model Act states that “methods” are excluded from utility model protection. On the basis of the respective provision, the German Patent and Trademark Office has refused a utility model application which was directed to “use of Serin/Threonin-Protein Phosphatase-Inhibitors for a pharmaceutical for the preventive therapeutic treatment of arterial sclerotic diseases”. The Federal Patent Court has confirmed this rejection; however, the appeal - on a point of law – was permitted. In its recently published decision, the German Federal Supreme Court has set aside the decision of the German Federal Patent Court and stated that claims which are directed to the use of a known substance for a medical indication can be protected by utility models. The German Federal Supreme Court reasoned that the respective exclusion from utility model protection is specifically concerned with working methods and manufacturing methods. Subject matter of a use claim according to the above-mentioned claim, is the suitability of a known substance for a specific medical use and, therefore, finally an inherent property of the substance. It therefore refers not to a method claim, but to a specific substance claim. This subject matter can be protected as a utility model.
(February 2006)
EPC Reform will enter into force in 2007
Greece became the fifteenth state to deposit its instrument of ratification of the Act of 29 November 2000 revising the European Patent Convention (Revision Act). The EPC 2000 will therefore enter into force on 13 December 2007 at the latest.
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(December 2005)
The Enlarged Board of Appeal of the EPO decided on the patentability of diagnostic methods in case G 1/04
The Enlarged Board of Appeal found that Art. 52(4) EPC excluding diagnostic methods practiced on the human or animal body from patenting must be construed narrowly. This means that a diagnostic method is excluded from patent protection only if all technical steps of the diagnostic method are performed on the human or animal body.
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(November 2005)
EPO suspends first-instance proceedings of potentially invalid divisional applications
In a Notice dated 2 November 2005, the European Patent Office informs that certain first-instance examination and opposition proceedings in which the decision depends entirely on the validity of a divisional application will be suspended. In a recent Board of Appeal decision, questions were referred to the Enlarged Board of Appeal concerning the validity of a divisional application which, at its actual filing date, contains subject-matter which extends beyond the content of any earlier application. Any first-instance proceedings where the decision depends entirely on the Enlarged Board's decision will accordingly be suspended.
(July 2005)
European Parliament votes against the Directive on the Patentability of Computer-Implemented Inventions
On July 6, 2005, the European Parliament voted against the directive on the patentability of Computer-Implemented Inventions (CII) and thus has made use of its discretion not to accept the common position presented by the Council and also not to propose further amendments, but instead to reject the common position, thus bringing the procedure to an end. The procedure started in February 2002 when the European Commission proposed the CII directive. In September 2003, the European Parliament voted for substantial amendments to the Commission’s proposal, which were to a large extent not accepted by the Council of the European Union. In March 2005, the Council of the European Union presented a common position for a directive, which was close to the original draft of the directive. The directive was originally proposed to harmonize the treatment of computer-implemented inventions in the member states on the basis of the case law developed by the EPO. The fact that the directive was not adopted does not have consequences for the EPO’s practice regarding handling patent applications on computer-implemented inventions. Instead, the EPO will proceed to grant patents on computer-implemented inventions on the basis of its case law (see also news below). The EPO's official position to the European Parliament’s vote can be obtained here.
(July 2005)
31 Member States of the European Patent Organisation
The European Patent Convention will enter into force for Latvia on 1 July 2005. The EPO will then have 31 member states.
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(April 2005)
New Developments in EPO Case Law regarding "Technical Character"
In decision T 0258/03, Hitachi, a favorable turn in the treatment of mixed technical and non-technical features is made. In this decision, the Board explicitly contradicts the approach of Pension Benefits System (T 931/95) to deny methods a technical character that serve a purely non-technical purpose and/or process only non-technical information, even if such methods concern or necessitate the use of technical means. In the Hitachi decision, the Board concludes that "in general, a method involving technical means is an invention within the meaning of Article 52 (1) EPC", and thus has technical character. If that case law was strictly applied by the EPO, hardly any invention will be considered non technical in the future. Doubts may however be raised that the EPO will apply this approach in their daily routine. Any invention that qualifies as being "technical" must be searched by the EPO and thus does not allow a refusal of search as it is currently done frequently by the EPO in regard to applications that have a business method - "taste".
(March 2005)
EPO: Limitations Concerning the PCT Applications for Which It Will Act as ISA and/or IPEA
On 27 January 2005, the International Bureau received a notification from the European Patent Office (EPO) prolonging the period for which the limitation of the EPO’s competence as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) in the field of business methods is applicable. The text of the notification is as follows: “The limitation of the EPO's competence as a PCT Authority concerning the field of business methods as set out in paragraph 1(a) and (b) of the Notice from the President of the EPO of 26 November 2001 and due to expire on 1 March 2005, is to be prolonged for a further period of 2 years from 1 March 2005, i.e. until 1 March 2007.”
(March 2005)
Recent EPC Amendments
In 2005 a plurality of amendments made to the European Patent Convention (EPC) will become effective.
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(July 2004)
Accession of the European Community to the Madrid Protocol takes effect on October 1, 2004
As of October 1, 2004, trademark owners from member countries of the Madrid Protocol will have the possibility to designate the European Community in their application for international trademark registrations as well as in international registrations which have already been registered. After the enlargement of the European Community which took place in May 2004, trademark owners will then be able to obtain protection in 25 member states with only one designation. They will also be able to use a Community trademark application or registration as the basis for an international application under the Madrid Protocol.
(April 2004)
New German Design Model Act entering into force on June 1, 2004 - Spare Part Protection remains possible
Germany is harmonizing its national Design Model Act in compliance with the European Directive 98/71/EC of October 13, 1998 on the legal protection of designs. With effect from June 1, 2004, the new German Design Model Act enters into force.
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(April 2004)
Enlarged Board of Appeal Decisions on the Allowability of Disclaimers
The EPO Enlarged Board of Appeal has now issued decisions in consolidated cases G 1/03 and G 2/03 with respect to the question whether a disclaimer which has no basis in the application as filed is allowable under the EPC. Accordingly, an amendment to a claim by the introduction of a disclaimer may not be refused as leading to an extension beyond the contents of the application as filed, for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed. A disclaimer may be allowable in order to (i) restore novelty by delimiting a claim against postpublished state of the art, (ii) restore novelty by delimiting a claim against an accidental anticipation by prepublished state of the art, and (iii) disclaim subject-matter which is excluded from patentability for non-technical reasons.
(April 2004)
Republic of Croatia becomes EPC Extension State
The Republic of Croatia has become extension state of the EPC as from 1 April 2004. The EPO will then have 28 member states and 5 extension states.
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(March 2004)
Grünecker is the first Law Firm filing a German Patent Application Online using Epoline
Thanks to the collaborative efforts of the German Patent and Trademark Office (DPMA) and the European Patent Office, applications for German national patents can now be filed with the DPMA online using epoline® software. On 18 March 2004, a German national patent application was filed online for the first time, using the German epoline® plug-in. The filing (application number 102004000017.4) was made on behalf of Daicel Chemical Industries, Ltd. by Thomas Schuster of the law firm Grünecker, Kinkeldey, Stockmair & Schwanhäusser.
(February 2004)
Referral to the Enlarged Board of Appeal of the EPO concerning the Interpretation of the term “Diagnostic Method practiced on the Human or Animal Body”
In a Referral, the President of the EPO referred several points of law to the Enlarged Board of Appeal based on two divergent decisions in the field of diagnostics. The Referral is mainly based on the divergence between the interpretation of the term “diagnostic method practiced on the human or animal body” in the context of Article 52(4) EPC in decisions T 385/86 and T 964/99, both of the Technical Board of Appeal 3.4.1.
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(February 2004)
Two Commission Proposals for the Establishment of Community Patent Jurisdiction
With the European Commission proposals COM(2003) 827 and COM(2003) 828 the Commission advances a key element of the Community patent system. According to COM(2003) 827 the Court of Justice shall have jurisdiction in disputes relating to the infringement and the validity of Community patents, disputes relating to the use of the invention after the publication of a Community patent application and the right based on prior use of an invention as well as in awarding damages or compensation. According to COM(2003) 828 a "Community Patent Court" shall be formed which is attached to the Court of First Instance. The Community Patent Court shall have, at first instance, exclusive jurisdiction in disputes relating to Community patents. Further, the proposal includes provisions for appealing decisions of the Community Patent Court before the Court of First Instance.
(January 2004)
Accession of the European Community to the Madrid Protocol expected for late 2004
After approximately seven years of discussions and negotiations the European Community and the Assembly of the Madrid Union have taken the necessary steps to allow for a link between the Madrid system and the Community trademark system.
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(December 2003)
Changes in respect of PCT applications filed as of 1 January 2004
For PCT applications filed as of 1 January 2004, there will be an International Search Opinion prepared at the same time as the International Search Report. Further, the designation system is streamlined and the power of attorney requirements have been waived.
(September 2003)
New developments regarding the Directive on the Patentability of Computer-Implemented Inventions
The proposal for a directive of the European Parliament and of the Council "On The Patentability Of Computer-Implemented Inventions" of the European Commission for Internal Market was approved with amendments by the European Parliament in a first reading on September 24, 2003. As a next step of the procedure, the amended proposal for the Directive has to be approved by the Council of the European Union. Given the radical nature of the amendments now included, it is most likely that the Commission and Council will reject many of these amendments to retrieve the original objective of the Directive, which was to harmonize existing patent practise concerning computer implemented inventions in Europe. Even a complete withdrawal of the Directive by the Commission appears no longer excluded.
(August 2003)
New Council Regulation concerning Customs Action against Goods Suspected of Infringing Certain Intellectual Property Rights
On July 18, 2003, the Council of the European Union enacted a new regulation on the above referenced subject. The new regulation will apply beginning July 1, 2004. On the same date, the previous Regulation (EEC) No. 3295/94 will be replaced by the new regulation.
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(August 2003)
United States Joins the Madrid Protocol
About 10 months after the U.S. Senate approved a resolution paper on the membership of the United States to the Madrid Protocol, the U.S. finally announced its membership officially to the World Intellectual Property Organisation in Geneva on August 2, 2003. With effect on November 2, 2003 it will be possible to designate the U.S. as part of an International trademark registration. The U.S. will claim individual designation fees which are yet unknown. The rules for the filing and processing of the Madrid Protocol applications by the USPTO are still under discussion. A finalised version is expected to be released soon.
(April 2003)
Change of Case Law concerning the Reimbursement of Fees in Invalidity Proceedings against the German Part of a European Patent or a German National Patent
In two recent decisions the German Federal Patent Court has changed its opinion regarding the issue of reimbursement of fees.
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(March 2003)
Decisive Steps Towards The Community Patent
The community patent, which was proposed decades ago, now seems to spring to life. The community patent will be designed to be a single patent enjoying protection all over the European Union. It will neither replace the European patent, which is a bundle of national patents deriving from a single application, nor national patents, but exist as an alternative to those patents.
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(February 2003)
Performing Rights Tribunal decides on Copyright Remuneration Duty for Personal Computers
According to the proposal for a settlement, which the Performing Rights Tribunal has decided on January 31, 2003, manufacturers and importers of personal computers (PCs), also under certain circumstances retailers, are generally obliged to pay remuneration to authors of words and pictures or to exploitation companies, which administer the copyrights in a fiduciary capacity.
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(January 2003)
The 30-month time limit under PCT will apply to China as from 1 February 2003
Further to its notification of the incompatibility of PCT Article 22(1), as modified with effect from 1 April 2002, with its national law, the China Intellectual Property Office, in its capacity as designated Office, has notified the International Bureau that it has withdrawn its notification with effect from 1 February 2003.
(August 2002)
New Provision in the German Act on Employees' Inventions regarding Inventions at Universities
An amendment of § 42 of the German Act on Employees' Inventions has the effect of a considerable restriction of the former privileged status of university lecturers and university assistants.
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(April 2002)
Design Protection in the European Union - Recent Developments and FAQs
On the European Union level, there are currently important legislative developments regarding protection of designs that should be of interest for European as well as non-European designers and/or legal entities employing them.
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(January 2002)
What’s new with the EURO/PCT-Route?
Several recent amendments to the EPC, the PCT and the internal practice of the European Patent Office (EPO) have led to important changes in particular in regard to PCT applications that are handled by the EPO in its role as ISA or IPEA. This paper concentrates on the most important aspects of these changes that need to be considered when deciding on an appropriate strategy for PCT applications.
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(November 2001)
German Patent Act on Official Fees will also affect Rules of Procedure – Official Last Annuity Reminder will be dropped.
On the occasion of changing over to the Euro system, a German Act on Official Fees has been established to become effective January 1, 2002. With this new Act, all fees before the German Patent and Trademark Office as well as the fees for the proceedings before the Federal Patent Court have been adjusted to the Euro system.
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(November 2001)
EPO rationalises the international preliminary examination procedure
To reduce the workload of the EPO when acting as International Preliminary Examination Authority, the Office will draw up international preliminary examination reports without detailed substantive examination unless requested otherwise, with effect from 3 January 2002.
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(November 2001)
New time limits for PCT applications to enter the national or regional phase without preliminary examination
The PCT Assembly decided, with effect from 1 April 2002, to change the time limit under PCT Article 22(1) from 20 to 30 months from the priority date. Further, the Administrative Council of the European Patent Organisation has decided to amend Rule 107 EPC so that a time limit of 31 months will apply from January 2002 on when entering the regional phase.
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(November 2001)
EPC Amendments concerning the grant procedure, filing of divisional applications, and entering the regional phase
Amendments to the EPC Implementing Regulations and to the Rules Relating To Fees, entering into force in January and July 2002.
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(November 2001)
European Patent Organisation responds to the incidents of 11 September 2001 in the USA
Amendments to Rule 85 EPC with respect to mail service interruptions entered into force with retrospective effect from 11 September 2001. Further, the President of the EPO has given internal instructions to help applicants and representatives who have their place of business or domicile in New York.
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(October 2001)
Furor over Frankenfoods
The IP protection that is available for genetically modified organisms has expanded and is starting to reach a relatively even level of availability around the world. However, even for genetically modified foods and crops whose safety and impact has been meticulously evaluated and approved by authorities who understand the science, statistics and issues, public backlash is affecting the value of that IP through regulation and boycotts.
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(September 2001)
Seven New Top Level Domains
On November 16, 2000, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced seven new top-level domains (TLDs) which they approved for further negotiations. These TLDs supplement the familiar TLDs .com, .edu, .gov., .mil, .net, .org.
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(January 2001)
Revision of the European Patent Convention
A revision conference for the European Patent Convention (EPC) was held in Munich from November 20 to 29, 2000. The delegates from the 20 member states of the European Patent Organisation considered a catalogue of nearly 100 proposals for revising provisions of the present Convention.
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(November 2000)
Method of Treatment Inventions under the EPC: What kind of Protection can you get?
Basic principles and recent trends in the assessment of patentability of methods of treatment by the Appeal Boards of the EPO.
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(September 2000)
Are business methods patentable in Europe?
The current case law of the EPO's Boards of Appeal does not provide patent protection to the same extent as it is possible in the United States.
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(June 2000)
New Rules of the European Patent Office for Biotechnological Inventions
The new regulations might not bring many big changes in the EPO's practise with regard to the patenting of biotechnological inventions, but might nevertheless have some impact on the patentability of transgenic plants or animals.
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