Dr Florian Schwab in WTR Daily on the question of the risk of confusion for one-letter brands.

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The online portal of the specialist magazine World Trademark Review from 21.11.2016 contained an article by BOEHMERT & BOEHMERT partner and trade mark law expert Dr Florian Schwab entitled “General Court finds likelihood of confusion in P signs“ on the recently published decision of the European Court of Justice from 11 October 2016 (T-350/15) on the question of the risk of confusion for one-letter brands. In the concrete case at hand, the Court looked at the likelihood of confusion between brands which differed only in the graphic style of the letter P for identically protected clothing. The decision strengthens the position of proprietors of one-letter brands. Dr F. Schwab has for many years made regular contributions to WTR Daily.

Manual on “European Qualifying Examination” by Dr D. Herrmann to be published by Beck Verlag.

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BOEHMERT & BOEHMERT patent lawyer Dr. Daniel Herrmann has authored the manual “Goal-oriented Methods to Pass the European Qualifying Examination (EQE)” which will soon be published by Beck Verlag. The bilingual work is geared to those taking the European Qualifying Examination and includes both targeted approaches as well as patent law foundations for parts A, B, C and D of the EQE. The author places special emphasis on useful and well-structured methodological support and preparation for the examination. The manual offers step-for-step approaches, time specifications per work step, details on scoring, examination schemes for questions on patent law. formulation suggestions and entire text passages, tables as work aids and many other practical tips for the examination. The methodology takes account of amendments to the EQE 2017. Patent law foundations are also explained. References are also given to relevant statutes, case law and examination guidelines. The author is a Patent Lawyer and European Patent and Trademark Attorney at the Munich office of BOEHMERT & BOEHMERT. The manual will be published by Beck Verlag and has around 300 pages. C.H.BECK ISBN 978-3-406-70789-6. Pre-orders can be submitted immediately, the release is beginning of 2017.

“Update Media Law 2016” with speech by Prof J. B. Nordemann.

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On 14 December 2016, the epi Media Institute will hold a seminar with the title “Update Media Law 2016”. Here, Prof. Dr. Jan B. Nordemann will give a speech on “Linking after the ECJ decisions Svensson and Sonoma – what differentiates links to news and to naked images”. Nordemann is a solicitor as well as specialist lawyer for copyright and media law and for industrial property rights. Together with his co-speaker Prof Ulrich Michel, he is legal director of the Erich Pommer Institute. The seminar is geared towards solicitors and specialist lawyers, corporate lawyers as well as interested experts looking to extend their knowledge in media law. The seminar will be held at the Berlin-Brandenburg Academy of Sciences (BBAW), Jägerstrasse 22/23, 10117 Berlin. Further information at

“Current developments in Copyright” Seminar with Prof J. B. Nordemann and Prof C. Czychowski

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Within the framework of a seminar organised by the German Lawyers Academy, Prof. Dr. Christian Czychowski and Prof. Dr. Nordemann will together lead participants through the subject “Current developments in copyright law – legislation and jurisprudence” on 2 December 2016. The seminar, which has been firmly established for years, will this year take place in Berlin. It is aimed at lawyers, company lawyers and adjudicators. It is also suitable for graduates of specialist legal training courses for copyright and media law, respectively of industrial property protection. Further information and registration.

CJEU: The antitrust as­sessment of licence con­tracts for patents which have become invalid

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In its decision of 7 July 2016 (case C-567/14 – Genentech / Sanofi-Aventis), the CJEU followed up on its antitrust Ottung case law (320/87, EU: C: 1998: 195, para. 11 et sqq.) and confirmed that licence contracts on patents which have become invalid can be valid if the licensee can terminate the licence contract within a reasonable deadline.

According to the CJEU decision, the cartel ban of Article 101 Para. 1 TFEU is not violated if in the case of the invalidation or the non-infringement of a licenced patent during the entire period of the licence contract a fee is to be paid for the use of the patented technology, as long as the licensee can terminate the licence contract within a reasonable deadline. Therefore, licence contracts which stipulate the payment of a licence fee for the use of a patented technology – even in the case of invalidity or non-infringement of the licenced patent – do not contravene antitrust law as long as a reasonable cancellation period is foreseen in the licence contract.

The CJEU also confirmed once again its decision Ottung of 12 May 1989 (320/87, EU: C: 1998: 195, para. 11 et sqq.) which stipulated that a licence fee can still be charged for the exclusive use of a technology even after the expiration of the period of protection of a patent if the licensee can terminate this contract within a reasonable deadline.

Furthermore, it also follows from the CJEU’s Genentech / Sanofi-Aventis decision that licence fees which have already been paid in the past cannot be claimed back due to the (later determined) invalidity of a patent.

With regard to licence contracts where a payment is also stipulated in case of non-infringement of the licenced patent, the Technology Transfer Block Exemption Regulation (TTBER) (Regulation (EU) No. 316/2014 of the Commission of 21 March 2014) has to be considered. According to para. 101 of the guidelines on TTBER, a hardcore restriction according to Article 4 Para 1a, d of the TTBER is given if the licence fees in a licence contract are calculated on the basis of all product sales, irrespective of whether the licenced technology is used. According to para. 102 of the guidelines on TTBER, such a licence clause which covers all product sales can, however, be admissible if it is indispensable, for example because the licensor cannot verify the scope on which his technology is deployed. Possibly licence clauses calculating licence fees based on all product sales can be valid irrespective of para. 102 of the guidelines on TTBER due to the CJEU Genentech / Sanofi-Aventis decision, as according to this decision they do not contravene Art. 101 Para. 1 TFEU if they contain a reasonable cancellation period. Ultimately, however, there is no legal certainty, so that contract clauses where licence fees are calculated on the basis of all product sales, irrespective of whether the licenced technology is used, should be avoided.

What is also still unclear is the situation that patent licences are granted for areas in which no patent protection existed at any time. An example for such a situation would be if a patent licence with a quota licence for the whole of Europe is agreed upon, although no patent protection exists in Latvia. Whether a reasonable cancellation period for the area of Latvia would be sufficient here to avoid a breach of antitrust law, is questionable.

However, patent licences should at any rate be invalid if the parties are aware at the time of the conclusion of the contract that no valid patents exist (also not in other areas).

First provisional compul­sory license issued in Ger­many on a European pa­tent for an AIDS medica­ment

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The German Federal Patent Court has ordered for the first time a provisional compulsory license under Section 24 of the Patent Act, allowing Merck (US) to continue to market the HIV-drug raltegravir, which is sold as Isentress® in Germany. Prior to that the Japanese company Shionogi & Co. Ltd. had requested a preliminary injunction against Merck (US) in 2015 for use of its European Patent 1,422,218 (DE 602 42 459.3), which covers the drug raltegravir. After Shionogi rejected Merck’s offer for a voluntary worldwide license on the said patent, Merck (US) responded by requesting the compulsory license, and then made an urgent request for such a license under Section 85 of the German Patent Act.

In the respective case 3 Li 1/16 before the 3rd Senate of the Federal Patent Court, various pharmaceutical companies of the U.S. consolidated group Merck & Co. sought a compulsory license for the AIDS drug balance between the monopoly rights conferred by the European Patent 1,422,218 of the patent holder Shionogi and the urgent public interest in health care.

In the judgment of 31 August 2016, the Federal Patent Court decided in favour of Merck (US) to temporarily allow the use of the European patent in such a way, so that the already previously distributed forms of raltegravir could continue to be offered as the pharmaceutical drug Isentress® for antiretroviral therapy against HIV and AIDS in the Federal Republic of Germany.

Under consideration of an independent expert opinion, the 3rd Senate came to the conclusion that the drug raltegravir was required, without any suitable alternative, by at least certain groups of HIV-infected and/or patients suffering from AIDS for medical reasons. These groups of patients actually cannot switch to other drug products without significant health risks. This is particularly true for pregnant women, newborns, newly infected patients, and also for patients that have already been treated against HIV for many years.

In their decision the 3rd Senate also considered that under the continuing use of raltegravir a possible risk of infection for others may decrease due to an effective reduction of the HI-virus load by that drug. Moreover, according to the Senate’s view, the applicants did also comply with the other conditions of a compulsory license under Section 24 (1) of the German Patent Act. In addition, the required urgency for the grant of such an interim usage order under Section 85 of the German Patent Act was given due to an oral hearing that was to be held on September 13, 2016 before the District Court of Duesseldorf (Ref.: 4c O 48/15). In these parallel proceedings the conviction was sought by the patent owner for prohibiting the marketing of Isentress® due to an alleged infringement of the European patent 1,422,218 through Merck (US).

In summary, the Court ruled that the aforementioned facts would allow the grant of a provisional compulsory license on the basis of urgent public interest. Such a decision is unusual for the Federal Patent Court of Germany, since traditionally, German courts have been reluctant to grant compulsory licences; especially under emergency proceedings such as in the present case. Typically, arising compulsory license proceedings are already settled by an agreement between the patent holder and the potential licensees before the matter is decided.

A written verdict with substantiated reasoning is still outstanding. The principal proceedings of 3 Li 1/16 remain pending and Shionogi can appeal the above summarised decision.

Equivalent patent infrin­gement if only one pos­sible embodiment is addressed by the claims

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In two of the latest decisions of the Federal Court of Justice of Germany, the earlier case law regarding claim construction has been discussed. In particular, the scope of protection by way of equivalence for claims of a patent limited to a certain embodiment during examination or opposition proceedings has been clarified.

The possibility of patent infringement beyond the literal wording of a granted claim, equivalent patent infringement, is a well-established legal concept in patent litigation before German courts. The preconditions which have to be fulfilled to acknowledge equivalent patent infringement are laid down in case law, in particular in the decision “Cutting-Blade I” (file No. X ZR 168/00) of the Federal Court of Justice of Germany (FCJ).

An interesting aspect in this regard is whether there can be an equivalent infringement if the patent in suit teaches various embodiments (each of which being a solution to the technical problem underlying the patent) but only one of these embodiments is addressed by the granted claims. In an earlier decision, “Occlusion Device” (X ZR 16/09) the FCJ has denied this question for a case where each of the various embodiments was explicitly(!) mentioned in the patent in suit.

In two of the latest decisions, the FCJ has now dealt with this topic once again. In the first decision, “Pemetrexed” (X ZR 29/15), a group of compounds was mentioned in the description of the patent in suit using a generic term. All of the compounds encompassed by the generic term were indicated as a solution of the technical problem. However, only one of the various compounds encompassed by the generic term was explicitly mentioned in the patent in suit. The granted claim only referred to this specific compound. The defendant in the infringement proceedings put another compound – not addressed by the claim but encompassed by the generic term – on the market. The crucial point in this case was, therefore, whether the remaining options – not explicitly mentioned in the description but encompassed by the generic term – fall within the scope of protection by means of equivalence or not. The FCJ confirmed that, in principle, in such a case the remaining options only mentioned in the description should not fall within the scope of protection. However, this should be different if the solution according to the patent claim only serves as an example for a broader technical concept and if the skilled person is able to deduce from the wording further embodiments which correspond to this general technical concept.

This view has been confirmed in a later decision of the FCJ, V-shaped Guiding Arrangement (X ZR 76/14). In this case, a V-shaped part of a device was required according to the granted claims of the patent in suit. Other shapes were generally mentioned in the description as an alternative solution without, however, referring to another specific shape. The defendant put guiding arrangements having a U-shape on the market. Just as in the Pemetrexed-case, the FCJ came to the conclusion that a general teaching in the description enabling the person skilled in the art to find further embodiments should not be sufficient for denying equivalent patent infringement even if only one specific embodiment has been considered in the claims. Only if other specific embodiments are explicitly (!) described in the description (but not have been considered in the granted claims), equivalent patent infringement would have to be denied in line with the principles of the “Occlusion Device” decision.

In conclusion, the FCJ has “alleviated” its earlier decision “Occlusion Device” and made clear that the principles of this decision are only applicable if specific embodiments are explicitly mentioned in the description but not have been considered in the granted claims. A general mentioning of other embodiments in generic terms is, however, not enough to deny equivalent infringement. In light of this case law, care should be taken during patent prosecution to encompass all embodiments explicitly mentioned in a patent application by the granted claims.

The Patenting of Graphi­cal User Interfaces

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The Boards of Appeal of the European Patent Office (EPO) have recently commented several times on the question of the patenting of graphical user interfaces and have more narrowly defined the area in which features of a graphical user interface can be seen as a technical feature and, therefore, relevant for the assessment of the inventive step. Even though this area remains a grey area, a general trend appears to emerge at the EPO which definitely shows parallels to recent decisions of the Federal Court of Justice.

Graphical User Interfaces have become our constant companions in many different areas: mobile telephones, medical equipment and machines in industrial processes are many areas of use. Naturally, this has stimulated an interest in patent protection for graphical user interfaces.

The standard practice of the EPO requires that a claimed subject-matter must solve a technical problem with technical means in a way which is not obvious in order to be patented. According to Art. 52 (2) of the EPC and the established practice of the EPO, the presentation of information, aesthetic creations, programs for computers and business methods as such are not considered to be technical. With regard to the patentability of user interfaces, this means that features of a patent claim which relate to the graphical display of a user interface or information which is displayed to the user via the user interface will possibly be seen as non-technical feature which cannot contribute to an inventive step in accordance with the examination approach of the widely known COMVIK decision T 641/00 of the EPO.

When looking at graphical user interfaces, the particularly relevant question is which criteria does a graphical user interface feature has to fulfil in order to be seen as a technical feature and thereby support the presence of an inventive step. The Boards of Appeal of the EPO have recently commented on the question of the patenting of graphical user interfaces and have worked out some criteria which should facilitate the assessment of which feature of a graphical user interface (if at all) can be seen as “technical feature” in terms of the case-law of the Boards of Appeal.

The user thinks!

Some of the criteria raised by the case law of the EPO concern the question of the extent to which the mental activities of the user conflict with the patentability of graphical user interfaces.

A feature of a graphical user interface, the effect of which can be ascribed solely to the reduction of the cognitive burden of the user, for example by allowing the user to cognitively process the displayed information better, so that he can make faster entries, was classed as a non-technical feature in many Board of Appeal decision (see EPO decisions T 1143/06, T 1741/08, T 1670/07). This decision practice has also led to a change in the guidelines for examination in the EPO (see section G-II, 3.7 of the guidelines for examination in the EPO). The named decisions paved the way for the so-called “broken technical chain fallacy” established by the EPO Boards of Appeal, which is based on the idea that in cases of an improved layout to reduce the cognitive burden of the user, or the fast or accurate reaction of the user by means of an entry, the mental activity of the user is involved and thereby interrupts the “technical chain” of procedures, beginning with the display and ending with the receiving of the input. One technical effect which is possibly linked to improved input depends, according to the Boards of Appeal, on the sole mental activity of the user which, depending on the user, can vary. As a result, the attainment of an allegedly technical goal is a mere subjective viewpoint, so that the definition of a user interface solely with the (subjective) purpose of reducing the cognitive burden of the user cannot be regarded as being technical.

On the other hand, it was clarified in several decisions and examination guidelines that the sole fact that the claimed subject-matter comprises mental activities does not automatically mean that the subject is not technical (T 643/00). Interestingly, it seems that some Boards of Appeal have hinted in more recent decisions that the claiming of an intuitive user interface which supports the user in the operating of the user interface, can have a technical effect (T 1958/13, No. 2.2.5 with reference to T 643/00; T 1715/11, No. 2.3).

Taking the Human by the Hand via the User Interface

One further question which was addressed in the case-law of the EPO Boards of Appeal is which role does the nature or the content of the displayed information play in the assessment of the technicity of the user interface or the information shown there. This question was recently addressed by the decision T 336/14 (Gambro Lundia AB vs. Fresenius Medical Care Deutschland). The decision concerned the appeal proceedings in an opposition regarding a patent, the patented subject-matter of which was a user interface for a dialysis machine. The user interface differed from the prior art in that saved data displayed on a screen (i) comprised the operating instructions to activate the dialysis machine and (ii) two pictograms were shown on the screen upon activating two touch-sensitive buttons which appear next to the operating instructions, whereby the pictograms represent the configurations of the dialysis machines which correlate with the operating instructions (T 336/14 Nr. 1).

In its decision T 336/14, the Board of Appeal 3.5.05 applied a special examination procedure or testing scheme.

First of all, the Board of Appeal approached the question of whether the data shown is so-called “functional data” or “cognitive data”. Functional data is that which shows the inherent technical features of the underlying system in questions, such as information for the synchronisation of coded picture lines (line numbers and addresses) for a corresponding reading apparatus (T 1194/97) or a television signal which reproduces information which show the technical features of the television system (T 163/85). In contrast, cognitive data is aimed directly at the user (the user interface) and is only relevant for same.

In the case of such cognitive data, the next question to answer is whether the relevant features concern “how” or “what” is being displayed, in other words the content of the displayed information. The patent in question concerned cognitive data and its content (i.e. the question of “what” is displayed).

In the following, this article concentrates on the assessment of the technicity of features which refer to the display of cognitive content, in other words “what” is shown.

When assessing whether the displayed cognitive content can be seen as a technical feature, the Board of Appeal concentrated on whether the user interface and the content of the displayed information credibly assist the user in carrying out a technical task by way of a continued or guided human-machine interaction process. In particular, it concerned the question of “why”, in other words “for what purpose” the information was displayed (T 336/14 No. 1.2.4).

In other words, according to the Board of Appeal, to answer the question of whether the displayed cognitive content is to be considered as a technical feature, it must be reviewed whether the displayed information is “technical information” which credibly enables the user to properly operate the underlying technical system and thus has a technical effect. It is particularly relevant to assess whether the displayed cognitive information contains an internal machine condition and requires the user to interact with the machine in a continued or guided way to enable the proper functioning of the machine (T 336/14 Nr. 1.2.4).

Furthermore, in its decision T 336/14 referring to the abovementioned decision T 1741/08, the Board of Appeal pointed out that not everything which supports or can support a technical act features a technical character because of this. In particular, an act which could possibly be performed by a user in reaction to a displayed information concerning the technical mode of operation of the system in question does not lead to the displayed information being a “technical information”. With this appraisal, the decision touches on another aspect of inventive step, namely the requirement that all embodiments which fall under the claimed subject-matter must causally, or at least credibly, solve the technical problem which is to be solved (G 1/03 No. 2.5.2, T 1078/08, T 1019/10, T 5/06, T 380/05, T 929/92, T 668/94). This was also confirmed recently by the Boards of Appeal of the EPO (T 2001/12, T 862/11).

As already mentioned, the decision T 336/14 addressed the question of whether the displayed cognitive content is to be viewed as a technical feature, whereby the Board of Appeal concentrated on “why”, or “for what purpose” the operating guidelines for activating the dialysis machine are shown on the user interface of the dialysis machine together with two pictograms which appear to act as touch-sensitive buttons and which are associated with the operating guidelines. The patent concerned a way of supporting a nurse in starting the dialysis machine in a safe and efficient way by displaying the operating guidelines and the pictograms.

The Board of Appeal found, however, that activating the switch according to the patent claim did not necessarily bring on the change of an internal status of the dialysis machine and the displayed pictograms did not contain any details of the current status of the system. In addition, the patent claim did not even indicate an order in which the buttons or the operating guidelines needed to be used in order to guarantee a proper operation.

As a consequence, the Board of Appeal came to the conclusion that the claimed operating guidelines and the pictograms did not credibly or causally support the user in terms of a continued or guided human-machine interaction. In particular, the Board of Appeal found that the displayed information, if at all, could only help the user to better understand or remember the steps to be carried out to start the dialysis machine and would, therefore, only address the mind of the user.

As a consequence, the distinguishing features of the main request relate to the presentation of information as such, which, according to settled case law of the Board of Appeal, does not support the presence of an inventive step.

In an auxiliary request, an additional distinguishing feature was inserted that a part of the display changes if one of the operating guidelines is carried out. In essence, the purpose of this is to give the user a visual feedback if the user of the dialysis machine ensures that one of the displayed operating guidelines is carried out (T 336/14 No. 3). The Board of Appeal admitted that this visual feedback on the carrying out of one of the operating guidelines referred to an internal state of the machine and would represent a “technical information”. However, the Board of Appeal emphasised that this distinguishing feature (or the entire patent claim) would not necessarily require that carrying out the operating guidelines has to be successful to trigger the visual feedback. In fact, what is being displayed visually is merely the activation of any operating guideline. If and how – in other words how successfully – the activated operating guideline is carried out by the dialysis machine left open by the patent claim, so that a proper functioning of the dialysis machine is not necessarily ensured by the claimed graphical user interface. An inventive step was, therefore, also denied by the Board of Appeal for the auxiliary request.

In the headnote of the decision, the Board of Appeal emphasised that when assessing the inventive step of a claimed subject-matter which comprises technical and non-technical features, in which the cognitive information displayed on the graphical user interface concern the content of the information and not the manner of the display, it must be examined whether the graphical user interface, together with the displayed content, credibly and causally support the user when carrying out a technical act by using a continued or guided human-machine interaction process. To assess this question, one also has to concentrate on the “why”, or “the purpose” of the graphical display.

This decision emphasises that features of a graphical user interface can support an inventive step if they causally or at least sufficiently credibly serve the technical purpose of guaranteeing a proper use of the underlying machine in question by the user.

The same Board of Appeal 3.5.05 made a similar decision previously in T 407/11. In this case, the Board of Appeal found that when assessing the inventive step, only the technical effects which are directly and causally derivable from the claimed distinguishing feature are relevant (T 407/11 No. 2.1.4). Furthermore, the Board of Appeal found in the decision that a technical effect can be seen if it is prevented in a data-processing electronic system that a function called up by a user is, due to his error, either not carried out at all by the system or in a way which is not wanted (T 407/11, No. 2.1.4, 2.1.5). What is interesting is that the Board of Appeal, in its headnote, emphasised that the relevant expert in connection with the provision of operation assistance via a user interface of a computer system is not an expert in software programming or computer engineering as such, rather an expert in user friendliness in the area of human-machine interface and software ergonomics.

As a consequence of T 336/14, the Board of Appeal 3.2.02 decided in T 690/11 that the criteria of T 336/14 would follow the established line of case law of the Boards of Appeal. In that particular case, the Board of Appeal 3.2.02 found that features of a graphical user interface, the aim of which is that a user makes an entry and triggers an internal process of the system in question, and the graphical user interface graphically displays the course of this process, has a technical character (T 690/11, No. 3).

Also shortly after the T 336/14, the Board of Appeal 3.5.05 decided in T 1073/13 again that distinguishing features which graphically display cognitive content and merely have the effect that the user does not have to remember a special sequence for a configuration before carrying out the configuration, is not technical. The Board of Appeal demanded again a credible support for the user when carrying out the configuration of the system in question, for example by displaying the current status of the system within the framework of a continued or guided human-machine interaction process. (T 1073/13, No. 1.1.6).

The decision T 1715/11 of the Board of Appeal 3.2.04, which was made before the decision T 336/14 of the Board of Appeal 3.5.05, did not discuss the issue of the strictly credible or causal connection between the graphical display of information and the achieving of the technical success, it did, however, point out that the layout of the graphical user interface does have a technical effect if it reduces errors of the user in the communication with the machine in question, thereby supporting the communication between human and machine (T 1715/11, No. 3.2, 3.7).

Parallels with Federal Court of Justice Case Law

The above trend of the EPO Boards of Appeal appears to be in harmony with the recent decision of the Federal Court of Justice (X ZR 110/13 – Entsperrbild) on the subject of graphical user interfaces. The Federal Court of Justice states that when examining the inventive step, instructions which concern the conveying of certain content with the aim of influencing the human imagination or comprehension should not be considered.

The matter at the heart of the decision of the Federal Court of Justice concerned a “swipe to unlock” mechanism for mobile telephones. The procedure according to the invention was identified such that the user can unlock the device with a predetermined finger movement on a touch-sensitive display, whereby the device remains locked if the movement does not correspond to the saved specifications. The contact movement also corresponds to a predetermined path on which an image moves in harmony with the contact on the screen. The Federal Court of Justice found that the specification to move an imagein harmony with the contact along a predetermined and shown path on the screen, shows the user the control movement to unlock the functions of the device, which the user carries out by touching the touch-sensitive screen in a particular way, by visually indicating a symbol on the screen that carries out a corresponding movement. The patent claims to show the user optically that he has given the computer an instruction with the movement which can unlock the device, and that the unlocking is actually taking place if the movement of the user corresponds with the requirements of the predetermined movement. The command which lies in the finger movement should, in other words, trigger not only the unlocking, but also a display which symbolises the command and the progress of its execution. This is a technical solution of the technical problem of making the execution of unlocking optically recognisable to the user, thereby increasing the operating safety.

Therefore, the human is – fully in line with a continued and guided human-machine interaction as required by the Boards of Appeal of the EPO – taken by the hand during the unlocking of the device by way of the user interface, and the status of the unlocking is optically displayed.

Conclusion

A series of partly older but hitherto accepted decisions view a technical effect in the mere display of internal statuses of machines (T 115/85, T 362/90, T 599/93 No. 4, T 1073/06 No. 5.4, T 756/06 No. 13, T 1670/07 No. 12, 13; see also EPO RL 2015, G-II, 3.7, 3.7.1). It would appear, however, that the more recent decision T 336/14 no longer concentrates only on the “nature” of the information when classifying displayed cognitive information as “technical information”, for example whether the displayed information refers to an internal technical system status. In fact, it is the “purpose” of the displayed information in the context of the patent claim which is to be focused on. A technical purpose must causally, or at least sufficiently credibly, result from this context.

In this respect, the more recent decisions of the Boards 3.5.05 and 3.5.02 indicate a possible further tightening of the criteria that cognitive information displayed by a user interface must fulfil in order to be treated as a technical feature and relevant for the assessment of the inventive step.

The Initiative “Early cer­tainty from Examination” – possible collateral damages and what this means for the applicant

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Early certainty from examination for patent applications is the aim of the European Patent Office’s initiative which bears the same name. In the future, there should only be 12 months between the application for examination for the European Patent Application and the decision. It is not just quality which is to be delivered, this quality has to be delivered early for reasons of efficiency. Early certainty for applicants and for third parties as to whether a patent application will be granted is, generally speaking, a positive thing. Third parties in particular have to know early on whether a patent application could encroach on their business activities.

However, according to the opinion of applicants, some “fine-tuning” is still required so that the collateral damages do not outweigh the advantages.

Ideally, decisions on patents and the costs involved should be adapted to the needs of each business. The pharmaceutical industry has very long product cycles and only one out of ten projects is successful. It is preferable, of course, to invest as little money as possible in the “dead horses”; however, due to the long product development periods, it is not until much later when the “dead” horse can be distinguished from the others. Therefore, costs are delayed for as long as possible. The enforced expedition of the examination procedure means that all costs, in particular the high validating costs, will be due for all applications in all projects early. There will be those much harder hit than the pharmaceutical industry, for example academic facilities, small businesses and technology transfer facilities who definitely need to avoid early costs before they have found a strong partner.

A further problem is setting up experimental data during the examination procedure. In many patent applications, in particular in the pharmaceutical and life-science fields, experimental data has to be submitted subsequently, for example in order to provide evidence of the claimed effect or to distinguish the invention from the prior art. For reasons of resources, this will be impossible for the “small” applicant to manage within 12 months.

However, critical voices can be heard from technical areas other than the pharmaceutical area.

The EPO was and is a reference for quality. Experts fear that this could change. Even today, it can be heard that the examiners have insufficient time to really comprehend the invention. Objections in examination reports have been based more and more on formalities. This can lead to unjustly limited claims. A trend which can only get worse.

New and inexperienced examiners with low salaries and temporary contracts are scarcely the solution to tackle the workload with a reasonable level of quality. Other Patent Offices which became “fast boilers” for inexperienced examiners for cost reasons became a quality disaster.

An examination procedure of 12 months also means one or two examination reports and then oral hearings within this period of time. Up to now, we have budgeted one report per year per application. If several reports as well as the oral hearing and the validating costs now confront the applicant each year, this will blow the budget for the small applicant. Costs will become a large problem.

It would be better for the applicant to have a tailor-made approach – expedited examination procedure upon request of the applicant or third parties.

If this initiative becomes reality as planned, then applicants will need a “de-PACE” request to “slow down” the procedure. In view of the costs, it will also be important to be able to put the validation on hold until after the patent has been granted. If the expedited examination is to also apply to pending procedures, then there will also be a need for a transition regulation.

It remains for the applicants to hope that the EPO considered the justified requirements of the applicants and adapt the initiative correspondingly.

What happens now after the German Federal Con­stitutional Court’s Metall-auf-Metall Decision?

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Sampling technology has become an integral part of today’s music production. It is not unusual in recording studios for artists and producers to recall sounds from other artist’s productions which they particularly liked, copy them from the original recordings and use them in their own productions via sampling software. The borrowed sound is used as a musical instrument. Often the particular fragment is so characteristic that it is meant to be recognised. A famous example is the production of “Hung Up” by Madonna who sampled the characteristic beginning of “Gimme! Gimme! Gimme” from ABBA – under licence from ABBA – as a leitmotif.

This decision of the Federal Constitutional Court dealt with a non-licensed sample, namely the copying of a two-second rhythm sequence from the recording “Metall auf Metall” by the band “Kraftwerk” which was played on a loop in two versions of the work “Nur mir” by Sabrina Setlur. The plaintiffs in the main proceedings were the two founders of the band “Kraftwerk”, pioneers of electronic music, and the case only concerned the neighbouring rights in sound recordings. In the “Metall auf Metall” decisions I and II (GRUR 2009, 403 and GRUR 2013, 614) the Federal Supreme Court of Justice held that the unauthorised use was not lawful.

The Federal Constitutional Court has now reversed these decisions. The standards which are specific to art required by Art. 5 Para. 3 Sec. 1 of the Federal Constitution stipulate that the use of an excerpt of copyright-protected subject matter can be recognised as a means of artistic expression and artistic design. If there is a conflict between artistic freedom on the one hand and an infringement of copyright or neighbouring rights on the other – an infringement which only slightly impairs the exploitation of those rights – the rightholder’s interest in exploiting those rights may have to give way to artistic freedom.

However, the verdict of the court is not the end of the matter. Although the Federal Constitutional Court can reverse laws or court decisions, it cannot enact laws or rewrite decisions.

One thing is certain: the contested Federal Court of Justice’s decisions on the “Metall-auf-Metall” case have been repealed. The Federal Court of Justice must now redetermine the case and navigate a middle course between the two sides which the Federal Constitutional Court has established. This corridor is still relatively wide. The Federal Constitutional Court literally said: “the permissibility of a free use of sound recordings for artistic purposes is not synonymous with the general permissibility of consent-free and free-of-charge sampling. A licensing requirement remains in cases of non-artistic use. Furthermore, Art. 24 Para. 1 German Copyright Act only allows a free use if a sufficient distance is kept to the extracted sequence or to the original recording.”

In fact, the Federal Constitutional Court describes two possibilities in its decision whereby the Federal Court of Justice could strike the requisite balance between artistic freedom on one hand and the rights of ownership of the recording companies on the other:

  • On the one hand, the Federal Supreme Court could carry on as it started and, within the framework of the right of “free use” (which is regulated in Art. 24 German Copyright Act), create the possibility of using samples without the consent of the recording company if to do so is necessary in the interest of artistic freedom. At any rate, in a case like this an artist would not be obliged to first try to recreate the sound himself (as the Federal Supreme Court had held in the contested decisions). Furthermore, he would not have to obtain a licence from the rightholder.
  • The Federal Supreme Court of Justice could alternatively start from a completely different point, in that it defined the scope of the neighbouring right of the producer of sound recordings more narrowly than it has been doing up to now, thus rendering the use of small fragments no longer an infringement of the right. In this case, however, and the Federal Constitutional Court has left no room for doubt, the Federal Court of Justice would have to call upon the European Court of Justice, as the scope of neighbouring copyright of producers of sound recordings is a subject matter harmonised throughout Europe.

One consideration which had already taken a prominent position in the press release of the Federal Constitutional Court is interesting: the court repeatedly emphasises that – even if the producer from whose recording the sample originates does not suffer a decline in sales because of the sampling – the legislator is not “barred at the outset” from linking the right to free use with a duty to pay a reasonable fee. Here, according to the Federal Constitutional Court, he could accommodate artistic freedom for example via “a subsequent obligation to pay a remuneration linked to the commercial success of a new work”.

It will certainly be worth keeping an eye on future developments in this case.