Managing IP Awards 2021: BOEHMERT & BOEHMERT wins Copyright and Design Award for Germany

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BOEHMERT & BOEHMERT has won recognition for its work during the past year at the Managing IP Awards, which were announced in a virtual ceremony on March 30 2021 and was presented with an award acknowledging its achievements in copyright and design law in Germany.

In copyright work, BOEHMERT & BOEHMERT has successfully defended a broadcaster in a high-profile copyright infringement and breach of contract dispute. It has also advised a leading music organization on an important dispute concerning the obligations on an internet intermediary to prevent copyright infringement online as well as on a copyright royalty dispute.

Design matters that the firm has advised on include defending an entrepreneur from the telecommunications industry against a registered design infringement claim, and representing leading companies in expanding their registered Community design portfolios.

About the Managing IP Awards
The Managing IP Awards programme is the most comprehensive and widely respected IP awards event in the world. Now in its 16th year, the programme covers a wide range of IP practice areas and more than 30 jurisdictions. Each year the research analysts obtain information from thousands of firms, IP practitioners and their clients through interviews, email and online surveys. Before compiling the shortlists, the researchers evaluate the work data supplied by firms and, where applicable, review publicly available information such as court and IP office records. They focus on work done or concluded in the previous year, particularly looking for case studies that were of great significance to clients and/or IP law and practice.

To view the full list of winners, watch the ceremony, and access additional information regarding the awards program, please visit ManagingIPAwards.com

 

Prof. Dr. Goddar to speak at the Global Intellectual Property Convention on 26 March 2021

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Discussing solutions to maximise the innovation value of inventions is at the heart of the annual Global Intellectual Property Convention (GIPC). At Asia’s leading conference, in-house counsels and innovators exchange best practices on intellectual property protection with IP lawyers from around the world.

This year, BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar will be responsible for the IP service providers’ session on 26 March, from 3.30 to 3.45 p.m., and will speak on the topic of “Fighting the Injunction Gap in German Patent Litigation – the Status of the 2nd German Patent Modernization Act”.

The conference, which has already attracted more than two thousand delegates from over fifty countries since 2009, will be held online this year. More information on the agenda of the GIPC 2021 as well as registration options can be found here.

Decision G 1/19 of the Enlarged Board of Appeal of the EPO published – Article by Dr. Daniel Herrmann and Felix Hermann in epi Information

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In the journal of the Institute of Professional Representatives before the European Patent Office, BOEHMERT & BOEHMERT German and European Patent Attorneys Dr. Daniel Herrmann and Felix Hermann discuss under the title “G 1/19 released: The Enlarged Board of Appeal decides on the Patenting of Computer-implemented Simulations and Designs” a recent decision of the Enlarged Board of Appeal of the EPO on the patenting of computer-implemented simulations and designs.

The Enlarged Board of Appeal concludes that computer-implemented numerical simulations and designs of a system or process are not to be treated differently from other computer-implemented inventions, thereby rejecting “extreme positions” such as in the reference decision T 0489/14.

In their final assessment of the EPO decision, the authors point out that it will be even more difficult in future for patent applicants to claim and protect a simulation or design process independently of a particular and specific technical input or output or an implied use of the results of the simulation or design process.

Read the full article by Dr. Daniel Herrmann and Felix Hermann here!

New Referral to the EPO Enlarged Board of Appeal on Oral Proceedings by Video Conference

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According to a decision by the EPO president on November 10, 2020 (EPO OJ 2020, A121), all oral proceedings before opposition divisions from January 4, 2021 onwards are to be conducted in form of a video conference, even if one or more parties do not agree to the form of a video conference. From January 1, 2021 onwards, also the EPO Boards of Appeal may conduct oral proceedings by video conference even without the agreement of the parties concerned (Art. 15a RPBA).

Before the introduction of these regulations, oral proceedings in the form of a videoconference could only be conducted if all parties agreed thereto. In the interlocutory decision T 1807/15 of March 12, 2021, the Technical Board of Appeal 3.5.02 referred the following question to the Enlarged Board of Appeal, which will be handled under G 1/21:

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

Oral proceedings before the Enlarged Board are already scheduled for May 28, 2021. The Enlarged Board has invited the EPO president to comment on in writing on the points of law referred to it by April 27, 2021. This referral will likely resolve the current legal uncertainty associated with video conferences in inter partes proceedings before the EPO in cases where one or more of the parties disagree to the form of a video conference.

The Enlarged Board of Appeal at the EPO releases decision G 1/19

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The Enlarged Board has released its decision G 1/19 dealing withthe patenting of computer-implemented simulations and designs. The Enlarged Board concludes that computer-implemented numerical simulations and designs of a system or process should not be treated any different from any other computer-implemented invention, thereby rejecting “extreme positions”, such as in the referral decision T 0489/14.

Background

In 2019, the Board of the EPO Boards of Appeal releasing the referral decision T 0489/14was inclined todisagree with the findings of the earlier – and to this date accepted – decision T 1227/05, which found that limiting a claimed invention to a computer-implemented simulation of an electronic circuit subject to 1/f noise qualifies asadequately defined technical purpose for a computer-implemented method functionally limited to that purpose, thereby conferring technical character to the simulation. In the referral decision T 0489/14, the Boardintended to demandstricter minimum requirements to acknowledge technical character of a simulation (or design process). In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity, which would clearly deviate from the findings in T 1227/05. Therefore, the Board put the following questions in front of the Enlarged Board of Appeal:

Question 1: In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

Question 2: If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

Question 3: What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

Decision of the Enlarged Board of Appeal

The Enlarged Board admitted question 1, interpreting it as asking whether, in the assessment of inventive step, the computer-implemented simulation of a technical system or process can solve a technical problem by producing a further technical effect that goes beyond the normal physical interaction between a program and a computer on which the simulation is run, if the computer-implemented simulation is claimed as such (G 1/19, see, e.g., Reasons 47 and 50). Only the second part of question 2 has been admitted, i.e. the Board answered the question whether it was a sufficient condition that the simulation is based, at least in part, on the scientific (e.g. mathematical and physical) principles applied within the boundaries set by the (natural or technical) system or process (“Question 2B” of G 1/19, see, e.g., Reasons 47 and 53). Question 3 was admitted as well and interpreted according to questions 1 and 2.

The answers to the admitted questions referred to the Enlarged Board of Appeal are as follows:

1.         A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, serve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.

2.         For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.

3.         The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

The Enlarged Board concludes that computer-implemented numerical simulations and designs of a system or process should not be treated any different from any other computer-implemented invention, thereby rejecting the “extreme position” in the referral decision T 0489/14.While the Enlarged Board did not reject the findings in T 1227/05, the Enlarged Board indicated that the findings in T 1227/05 would not be generally applicable due to the specific character of the case underlying T 1227/05 and thereby took the lighthouse character of this decision away.

The Enlarged Board considers the “de-facto standard” at the EPO for the assessment of inventions having a mix of technical and “non-technical” features as defined in the headnotes of T 641/00 (COMVIK approach) to be suitable for the assessment of computer-implemented simulations. According to the COMVIK approach, the decisive question for the assessment of which features of a simulation of a system or process are technical features, and thus relevant for the assessment of inventive step, is whether the simulation or design process contributes to the solution of a technical problem by producing a technical effect.Therefore, the technical considerations relevant for the assessment of inventive step are only those technical considerations that pertain to the invention, i.e. to the simulation of the device or process, rather than the simulated system or process (G 1/19, Reasons point 125).

Referring to G 3/08, the Enlarged Board acknowledges that a simulation is necessarily based on the principles underlying the simulated system or process and that technical considerations associated with the system or process to be simulated typically form the basis of the mental act of establishing the model of the technical device or process being used in the simulation. The Enlarged Board holds that such mental act of establishing the model (and equations/algorithms) underlying the simulation is devoid of technical character, because the technical considerations being used inestablishing the model underlying the simulation do normally not translate into a technical effect being rendered by the execution of the simulation(G 1/19, see, e.g., Reasons106-112, 121, 137, 141).Were technical considerations associated with the system or process being simulated sufficient, for the purposes of question 2, for thesimulation to be of technical character, thencomputer-implemented simulations would hold a privilegedposition within the wider group of computer-implementedinventions without there being any legal basis for such aprivilege (G 1/19, Reasons point 141).

Along the same lines, the Enlarged Board also holds that a direct link with (external) physical reality, as demanded by T 0489/14, is not a requirement or necessary condition to acknowledge a technical character of the features claimed in context of a simulation or design process, even though such a link would likely be sufficient to establish technicality of those features in most cases (G 1/19, Reasons88, 139, 85). This is because a technical effect can also occur within the computer-implemented process itself.  A simulation without an input or output having a direct link with physical reality can still solve a technical problem, for example by adaptation of the simulation software to the internal functioning of the computer system or network (e.g. to achieve better use of storage capacity or bandwidth, G 1/19, Reasons85, 115-116).Moreover, potential technical effects, i.e. effects achieved only in combination with non-claimed features,can be considered in the course of assessing the technical character of the claimed features. Those potential technical effects are to be distinguished from virtual or calculated effects, i.e.technical effects, which are not achieved through aninteraction with physical reality, but are calculated insuch a way as to correspond closely to “real” technicaleffects or physical entities, and direct technical effects on physical reality. Such potential technical effects may, for example, be attributed to data or data structures, which are especially adapted for the purposes of itsintended technical use.  In such cases, either the technical effect that would result from the intended use of the data could be considered implied by the claim, or the intended use of the data could be considered to extend across substantially the whole scope of the claimed data processing method(G 1/19, Reasons89-97).

Conclusions

The Enlarged Board’s statement that computer-implemented simulations and design processes are not different from any other computer-implemented processes, and the reliance and strict application of the principles of the COMVIK approach, once again confirm and manifest the EPO’s established case law on computer-implemented inventions. While the good news for applicants is that the Enlarged Board did not follow the strict proposal by T 0489/14, the Enlarged Board confirmed the overall strict praxis of the assessment of computer-implemented inventions under the case law of the EPO Boards of Appeal also for computer implemented simulations and design processes.

As simulation and design processes are often developed to run on conventional computer hardware, it will become even more difficult for applicants to claim and protect the simulation or design process independent of a particular and specific technical input or output or (implied) use of the results of the simulation or design process, e.g. for controlling a machine or manufacturing a product. This also imposes that applications in this field have to be carefully drafted in consideration of whether the technical character of the invention is arguably based on a technical effect achieved by the simulation or design software when running on the computer. Furthermore, while the accuracy of the simulation or design process is usually not leading to an acknowledgment of the technical character of the simulation, it may neverthelessimpact the credibility of the simulation or design process in terms of inventive step (Art. 56 EPC) and/or sufficient disclosure of the invention (Art. 83 EPC).Thisrequires applicants to carefully consider the level of detail of the simulation and design method that needs to be disclosed in the application and also the number of alternatives that must be disclosed to support the invention over a broader scope than a single specific example implementation.

New revised version of the Guidelines for Examination in the European Patent Office dated 01 March 2021

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On 01.03.2021, the European Patent Office published a new revised version of the Guidelines for Examination in the European Patent Office (EPO). These Guidelines for Examination contain the instructions to be followed by the EPO in all first instance proceedings with regard to the practical and procedural aspects of the examination of European patent applications and patents under the European Patent Convention (EPC) and its Implementing Regulations (Rules). The new version of the Guidelines for Examination has already been announced in the Notice from the European Patent Office dated 25 January 2021. In the following, we summarize the changes that we consider most important for practice.

Part A of the Guidelines for Examination, concerning the formal examination of patent applications, now clarifies (see Section A-IV.1) that the term “earlier application” in Article 76(1) EPC and Rule 36 EPC is to be understood as a patent application filed at least one day before the divisional application. Thus, a divisional application cannot be filed on the same day as its parent application.

In Part C of the Guidelines for Examination, concerning procedural aspects of substantive examination, the Guidelines for Examination have been adapted, inter alia, to the abolished the possibility of waiving the right to receive a further communication under Rule 71(3) EPC(cf. Notice from the European Patent Office dated May 26, 2020), and chapters referring to the now unavailable waiver have been deleted.

With regard to Euro-PCT applications in which the applicant has subsequently corrected an erroneously filed element (description or claims) or parts thereof under Rule 20.5bis PCT during the international phase, and the international filing date has not been postponed, it is clarified that the EPO as designated/elected Office will consider as filing date only the date on which the complete correct documents were filed (cf. SectionC-III. 1.3). This rule will be particularly relevant for Euro-PCT applications for which the EPO was not itself competent as International Filing Office or International Searching Authority.

Due to the significance of this practice for any priority claims and the relevant state of the art in the examination procedure, the applicant concerned will in future be given the opportunity to file a written statement within 2 months after being requested to do so and to decide either:

  • to continue with the original international filing date and to base the examination procedure also on the documents originally filed partially erroneously, or
  • to proceed with the date on which the correct application documents were filed as the filing date, as well as to recognize the correct application documents as the original application documents for further proceedings.

This request can also be made proactively by the applicant within the 31-month period to avoid delaying the application process in the regional phase.

Further changes relate to telephone and personal consultation with the examination department, or the first examiner. These previously represented different categories with different regulations, which have now been combined and standardized into a single category “consultation” (cf. Section C-VII.2). A consultation should preferably be held as a videoconference, which allows, if necessary, the presentation of documents, the participation of other persons, and – in case of doubt – the verification of the identity of the persons participating. However, at the request of the applicant, consultations may also be conducted by telephone if the situation so requires.  Oral statements made during a consultation that substantively address objections raised in an earlier communication may result in the examiner cancelling any running time limit. Furthermore, documents admissibly submitted by emailduring the consultation (see Section C-VII.3) may in fact be sufficient to preserve an ongoing deadline.

Another change in the Guidelines for Examination of practical importance concerns the treatment of requests for decisions according to the state of the file. Section C-IV.15.1 of the Guidelines now provides that if a request for oral proceedings is pending at the time the applicant files a request for decision according to the state of the file, the Examining Division will interpretthe request for decision according to the state of the file as an implicit withdrawal of the pending request for oral proceedings. Section C-IV.15.2 emphasizes that in a decision according to the state of the filefreshly presented arguments of the applicant in response to a communication of the Examining Division must be considered by the Examining Division by issuing either a regular reasoned decision or a further communication. The minutes of a consultation does not meet the standards of a communication under Article 94(3) and thus cannot be the basis of a decision according to the state of the file.

Part E of the Guidelines for Examination, concerning general procedural matters, has been updated, inter alia, with regard to conducting oral proceedings as a videoconference. In the light of theDecision of the President of the European Patent Office dated 17 December 2020 concerning oral proceedings by videoconference before examining divisionsare to be held by videoconference (see Section E-III.1). Oral proceedings before the Examining Division shall be held in person at the premises of the EPO only if there are serious reasons against holding the oral proceedings by videoconference.

For oral proceedings in opposition proceedings, oral proceedings may be held as a videoconference if the parties agree (see Section D-IV.3.2). However, due to the Decision of the President of the European Patent Office dated 10 November 2020 concerning the modification and extension of the pilot project for oral proceedings by videoconference before opposition divisions, oral proceedings before opposition divisions will be held by videoconference as ofJanuary 4, 2021 until at leastSeptember 15, 2021. Only if there are serious reasons against holding a videoconference in opposition proceedings, the oral proceedings will be postponed until after September 15, 2021.

However, serious reasons are likely to militate against a hearing by videoconference only in very exceptional cases. The Guidelines for Examination emphasize that such serious reasons include reasons relating to a participant to the oral proceedings as an individual (e.g. a proven visual impairment that prevents a representative from following oral proceedings on screen) and reasons related to the nature and subject-matter of the proceedings (e.g. where they involve the demonstration or inspection of an object where the haptic features are essential, to the extent that this is possible in accordance with the applicable provisions). Sweeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard.

If, exceptionally, applicants wish oral proceedings to be held before the Examining Division on the premises of the EPO, such a request must be filed as early as possible, preferably together with the request for oral proceedings. However, whether such a request is granted is at the discretion of the competent division. A rejection of such a request must be (briefly) substantiated by the Examining Division – irrespective of the time of filing the request. A rejection is not appealable (see Section E-III.2.2).

Furthermore, Section E-III.8.5.2 has been added to the Guidelines for Examination. This section concerns the filing of written submissions duringoral proceedings held as a videoconference. If oral proceedings are held as a videoconference, documents filed subsequently as referred to in Rule 50 EPC must be filed by emailWhere filed documents require signature, this signature may be applied to the attached document or to the text of the accompanying email. The signature must take the form of a string of characters or a facsimile signature. The string of characters which is selected by the signatories to provide evidence of their identity and of their intent to authenticate the message in question must clearly indicate the person’s name and position. The documents are to be sent to the email address indicated during the videoconference by the competent department.

Amended application documents must be submitted as attachments in PDF format and comply with the WIPO Standard for Filing and Processing in Electronic Form (Annex F). Where an attachment containing these amended application documents is not in PDF format or does not comply with the WIPO Standard or is illegible or incomplete, the party must be promptly informed during the videoconference. Where the deficiencies cannot be remedied during the videoconference or within the time limit set, that document (or that part of the document which is illegible or incomplete) is deemed not to have been received.No paper documents need be filed to confirm documents filed by email. All submissions made by email during a videoconference must be annexed to the minutes unless the exceptions under Rule 144 EPC apply.

Section E-III.11, concerning the technical aspects of oral proceedings held as a videoconference, has also been revised. In order to prepare for oral proceedings by videoconference, in addition to the summons, participants will receive an email confirming the date, time and the videoconference contact details to be used to establish the connection (in the form of a link or by other suitable means) and containing any further appropriate information, including on the organization of the videoconference. If the videoconference does not start at the agreed time, the Examining Division or Opposition Division will contact the representative or his/her office by telephone. If the connection cannot be established for technical reasons, the videoconference shall be terminated and a new summons to oral proceedings shall be issued.

Section E-VIII.1 of the Guidelines for Examination, which concerns the calculation of time limits, hasalso been restructured and supplemented. The Guidelines for Examination deal with extensions under Rule 134 EPC in a separate section, E-III.1.6.2, taking into account the contents of the Notice from the European Patent Office dated 22 October 2020 concerning the procedures and safeguards which apply under the EPC and the PCT in the event of outages of means of electronic filing and other online services. Accordingly, the extension of time limits under Rule 134(1) EPC also applies in cases where one of the means of electronic filing provided by the EPO under Rule 2(1) (currently Web-Form Filing, Online Filing (OLF), New Online Filing (CMS), ePCT and fax) is not available, regardless of any restrictions on the documents which may be filed by the means of electronic filing that suffered the outage. Also, Rule 134(2) EPC (general dislocation in the delivery or transmission of mail in a Contracting State) may now apply to a general breakdown of any of the means of electronic communication accepted by the EPO for the filing of documents. Furthermore, Section E-III.1.6.2.3explicitly lists the time limits falling within the scope of Rule 134 EPC and also mentions the cases in which the extension of time limits under Rule 134 EPC is not available.

Another practically relevant change in Part F of the Guidelines for Examinationhas found its way into Sections F-IV.4.3 and F-IV.4.4, whichconcern inconsistencies between the description and the patent claims (Article 84 EPC). Here, the practice of the examining divisions concerning the adaptation of the description to amended claims – which varies considerably across the divisions and also the fields of technology – has now been fundamentally revised. The Guidelines for Examination now explicitly require in Section F-IV.4.3that in cases where part of the subject-matter of the description and/or drawings is not covered by the claims, the description must be adapted to the claims in order to avoid inconsistencies between claims and description. Embodiments in the description which are no longer covered by the independent claims must be deleted (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06). Section F-IV.4.4 now clarifies that claim-like clauses must be deleted or amended prior to grant, in particular if the clauses are inconsistent with the claimed subject-matter or if it merely repeatonly repeat the claimed subject-matter in a very literal manner, which is now explicitly considered to be “an irrelevant and unnecessary reduplication […]” that do not fulfil the requirements ofRule 48(1)(c).

In Part G of the Guidelines for Examination, which concerns patentability, the sections on computer-implemented inventions and on inventions in the field of biotechnology have been revised and further clarified.

In Section G-II.3.6, which concerns computer programs excluded from patentability as such under Article 52(2) EPC, adjustments have been made in the light of recent case law. Section G-II.3.6.3 of the Guidelines for Examination now explains more clearly under which circumstances a data structure or data format may contribute to the technical character of the invention. Furthermore, the new section G-II.3.6.4 has been included, which concerns database management systems and information retrieval. There, the Guidelines for Examination include a remarkably clear statement that database management systems are technical systems installed on computers to perform the technical tasks of storing and retrieving data using various data structures for efficient data management. Thus, technical means are used in a process performed by a database management system, so that these processes are not excluded from patentability under Article 52(2) EPC.

The now well-established case law abouthuman stem cells that can be obtained without the consumption of human embryos are patentablehas found its way into the guidelines. Section G-II.5.2 now clarifies that pluripotent human stem cells including human embryonic stem cells, the use of such stem cells, or products derived therefrom, do not fall under the patenting prohibition of Article 53(a) and Rule 28(1)(c), if the application has a filing- or priority date on or after June 5, 2003, and if the technical teaching of the invention allows the use of parthenogenetically activated human oocytes(G-II.5.3).

Furthermore, sections G-II.5.3 and G-II.5.4 have been adapted to the recent case law on the exclusion of patentability of plant- and animal material, which can be produced exclusively by essentially biological processes (G 3/19). The new guidelines clarify that any material allowing regeneration of whole plants, such as cells, seeds, cuttings, etc., are also subject to the exclusion of patentability under Article 53b EPC, provided that the plants from which this material is derived can be exclusively obtained by means of an essentially biological process. However, this exclusion does not apply to patent applications and patents with a filing or priority date prior to July 1, 2017 (see G 3/19, OJ EPO 2020, A119).

In addition, a new Section G-II.5.6on patentability and examination of inventions in the field of antibody technology has been added to the new Guidelines for Examination. Here, an EPO internalantibody focused examination practice had been established, which is now enshrined in the new Guidelines for Examination. The Guidelines for Examination deal in particular with admissible structural/functional antibody definitions in claims, as well as the basis for an examination of inventive step in this field.A structural definition of a claimed antibody must reference at least all 6 CDR regions, which are the main mediators of antibody-antigen binding. Otherwise, the antibody patent claim would be objectionable under Article 84 EPC because it lacks an essential technical feature. Broader structural definitions of antibodies must be supported by experimental evidence.

To the extent that an antibody is defined by its target antigen or an epitope, the corresponding antigen/epitope must be referenced without open-ended formulations (such as definitions by broadsequence identity regions or open terms such as “comprising”), although negative features, in the sense of antigens or epitopes that are not bound by the antibody in question,are possible.

If solely functional features are used to claim an antibody, and the prior art discloses an antibody binding to the identical antigen, it is clarified that the burden of proof of novelty of the claimed antibodies lies with the applicant. It is also possible to define an antibody by means of product-by-process features, insofar as the general requirements of this claim category are fulfilled. However, to the extent that the referenced method is directed to an immunization of an animalwith an immunogen comprising a sequence that is not 100% identical to a defined sequence of the alleged antigen bound by the antibody, the claim does not meet the requirements of Article 84 EPC.

In section G-VI.7.1.1with regard to inventions of a second medical indication, the Guidelines for Examinationindicate the requirement whether a substance or a mixture of substances has a direct therapeutic effect as an active ingredient for a specific medical use due to its chemical properties. If it is a merely a physical property, such as a shielding effect of a substance of the use of a substance as a filler to protect sensitive tissue, such substance or mixture of substances is to be regarded as a device and not amenable to patenting under Article 54(5) (T 1758/15).

Berlinale 2021: Producers’ Brunch on 09.03.2021 with Dr. Martin Schaefer as host

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For ten years now, the Producers’ Brunch has had a fixed place in the Berlinale schedule. For the first time, the pandemic prevented a presence event this year. The organisers, which have included BOEHMERT & BOEHMERT from the beginning, did not want to let the tradition die and decided on a virtual form of the event.

Shortly after the end of the Online Berlinale 2021, the Producers’ Brunch took place on 9 March from 10.00 to 11.30 a.m. under the patronage of “media:net berlinbrandenburg” as a live stream on YouTube and Facebook. In line with the current problems, the topic “Windowing and Covid-19: Other exploitation windows in film?” was on the agenda of a competent panel of film producers and lawyers.

In the virtual panel discussion, attorney at law and BOEHMERT & BOEHMERT partner Dr. Martin Schaefer, as moderator, led through a lively and partly controversial discussion between Christine Berg as representative of the association of cinema operators HDF, Katharina Hiersemenzel from Constantin Film AG, who contributed in particular the perspective of the distributor, as well as Christian Sommer, the German representative of the Motion Picture Association, an association in which the major Hollywood studios are represented. The question of making the blocking periods under the Film Subsidies Act more flexible was discussed, as was the question of the future of classical cinema in a time of growing diversity of series and film formats in streaming services. The debate showed that it could be useful to bring the complexity of the current situation to the attention of political decision-makers in ministries and parliaments from within the industry – on a similarly broad basis as in the Producers’ Brunch.

 

Copyright note: The photos were kindly provided by Ms Juliane Herzberg (media:net berlinbrandenburg).

“Digitalization and Intellectual Property” – Article by patent attorney Nils T. F. Schmid in German government consulting booklet on “Artificial intelligence”

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Progressive digitalization – combined with artificial intelligence (AI) as well as growing computer capacities – is changing our lives permanently and is without doubt the central challenge for industries in the years to come.
However, what on the one hand offers a great opportunity for the protection and commercialization of intellectual property, on the other hand also poses the considerable risk of circumvention of IP rights and thus for undesired imitation. Furthermore, the question arises as to whether and how a distinction can be drawn between works of art or inventions generated by artificial intelligence and those created by humans. This question is of central importance for German law and prosecution, as the German idea of intellectual property is based on the idea of an author or inventor, and more strictly so than in any other country.

BOEHMERT & BOEHMERT patent attorney Nils T. F. Schmid addresses these issues in his article “Digitalization and Intellectual Property” in the information brochure of the Innovation Commission of the Federal Association for Economic Development and Foreign Trade (Bundesverband für Wirtschaftsförderung und Außenwirtschaft BWA) on the topic of “Artificial Intelligence”.
Using the example of 3D printing, Mr Schmid looks at how 3D printing could influence intellectual property protection strategies and which legal issues will come to the fore as a result.
In the second part of the article, Nils T. F. Schmid deals in detail with the demarcation of AI-generated inventions against human-created works as well as with the resulting questions regarding patent protection for AI inventions and their ownership.

The article “Digitalization and Intellectual Property”, which appeared in the aforementioned BWA brochure “Innovation”, may be accessed here as a PDF in German.

Why Ferrari can keep the “Testarossa” trademark and the ECJ’s latest case law on genuine use

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Ferraris may well be able to keep its iconic Testarossa for vehicles, according to a ruling by the ECJ, even though it has not sold any vehicles under the mark since 1997. Even a minor use of the mark for spare parts is sufficient to preserve the right in light of this decision.

1. History of the case

In 2017, the Düsseldorf Regional Court ruled, following an action brought by toy manufacturer Kurt Hesse, who now heads Autec AG, that sports car manufacturer Ferrari had to consent to the cancellation of its German and international trade mark for “Testarossa” because Ferrari had not used the mark for vehicles for over 20 years. Ferrari had argued that it still offered maintenance, repair and retrofitting of Testarossa vehicles. However, the District Court pointed out that this was done under the Ferrari umbrella brand and that the use of Testarossa in the spare parts business was too small to maintain the trade mark. Ferrari had sold spare parts for Testarossa vehicles worth €17,000 during the relevant period of use between 2011 and 2017.

According to press reports, the background for the cancellation action was that Hesse no longer wanted to pay licence fees for the use of the trademark in the toy sector and, moreover, had plans to use the model name for bicycles, e-bikes and shavers as well.

Ferrari appealed against this decision of the Düsseldorf Regional Court. The Higher Regional Court of Düsseldorf referred a number of questions concerning rights-preserving use to the ECJ for a preliminary ruling.

2. Decision of the ECJ

In its judgment of 22.10.2020, the ECJ (case number C-720/18, GRUR-RS 2020, 27498) answered these questions in a preliminary ruling.

According to the relevant provisions, a trade mark is revoked, i.e. cancelled, if it has not been put to genuine use within an uninterrupted period of five years and there are no proper reasons for its non-use. According to the established case law of the ECJ, a trade mark is “put to genuine use” if it is used in accordance with its principal function, i.e. to create or preserve an outlet for those goods and services. Token uses of the trade mark which are made solely to maintain the trade mark are not taken into account.

Since Ferrari had no longer used the mark for motor vehicles during the period of use, the central question for the outcome of the proceedings was whether a mark was “genuinely” used for motor vehicles even if it was only used for individual parts or accessories. The ECJ answered this question in the affirmative, thus confirming its 17-year-old case law (judgment of 11 March 2003, Ansul, ECJ Case C4001 C-40/01, ECLI:EU:C:2003:145, para. 43), which had always met with skepticism in Germany, as it did not seem to be compatible with traditional German case law.  Although the mark had only been used for spare parts of high-priced luxury sports goods, the ECJ also seems to affirm a use for the broad term “land vehicles and their parts”, as luxury sports goods is not an independent sub-category. Also the fact that the trade mark registration itself protects parts of land vehicles does not exclude a use for land vehicles. Finally, even a relatively small number of units sold does not mean that the trade mark is used purely symbolically, as long as the trade mark has been used with the aim of preserving an outlet. Thus, in the case of high-priced luxury sports goods, even a very low turnover could constitute a genuine use maintaining the registration. The ECJ, thus, confirms an old decision of the Federal Patent Court, which considered the sale of a few COBRA sports cars as a genuine use (Federal Patent Court GRUR 2001, 58 – COBRA).

The ECJ’s comments with regard to the sale of used trade mark goods are also very interesting.  A trade mark may also be used for goods which have already been put on the market under that trade mark and for which trade mark rights have, thus, already been exhausted. The fact that the proprietor of the trade mark cannot prohibit third parties from using his trade mark for goods already put on the market under that trade mark does not mean that he may not use it himself for such goods. A trade mark may, therefore, also be put to genuine use by its proprietor by marketing used goods. This decision seems to contradict the previous precept of German trade mark law, according to which a use of a trade mark that does not infringe cannot be a genuine use of the trade mark. This precept was also decisive for the Düsseldorf District Court not to see a genuine use in the sale of used Testarossa cars.

The ECJ also ruled on the legal validity of the German-Swiss Convention of 1892, which provides that use in one country is also deemed to be use in the other country. Although, according to the ECJ, there is no possibility of interpreting this agreement in conformity with EU law, the agreement could be applied by German courts as long as the incompatibility has not been removed, which Germany is obliged to do under Art. TFEU Article 351.

In light of the ECJ’s decision, Germany must also amend its rules of civil procedure on the burden of proof in revocation proceedings. The rule according to which the plaintiff or applicant bears the burden of proof and the trade mark proprietor only has a secondary burden of proof is not in conformity with EU trade mark law. Rather, the trade mark proprietor bears the full burden of proving that the trade mark has been “put to genuine use”, because he is in the best position to provide evidence of the specific acts of use.