The European Patent Office will increase its fees on a rotating basis as of April 1, 2022

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The EPO is striving to make online filing of application documents the standard format. To make this more attractive, the EPO has made it possible to file in DOCX, the character-coded format.

In the future, the EPO will distinguish 3 cases for filing fees:

1. All application documents are filed online in character coded format. Then the official filing fee is only EUR 100.00.
2. The application is filed online, but at least one document is not in character-coded format. Then the filing fee is EUR 130.00.
3. Filing in paper form, with a filing fee of EUR 270.00.

It is therefore strongly recommended to ensure in the future that all application documents are filed in character-coded format in order to save official filing fees.

The chart on this page illustrates the development of filing fees in recent years. Reflected are the specific filing fees for online (red line) and paper (dashed red) filings since 2006, as well as the new filing fee incurred for online filings with only one non-character-coded document, since 2020 (dashed and dotted red). As expected, all fees have increased over the period, with one exception: since the introduction of online filing with one non-character-coded document, the amount for online filing has decreased significantly in 2020.

Accordingly, official fees can be saved if all application documents are filed in a character coded format. It is to be noted, though, that character coded files, contrary to raster formats (PDF) could easily be modified without identifying such changes afterwards. Furthermore, a consistent representation of special characters and formulas is ensured with raster formats only. It may be advisable to file documents additionally in a raster format; the slightly higher fee of EUR 130 applies.

The graph also shows the percentage change in the online submission fee from the last change (dashed and dotted blue). The significant 20 percent decrease in 2020 is clearly shown. Also shown is the inflation rate in Germany (dashed blue). As can be clearly seen, changes in fees have been at significantly higher levels than the inflation rate, ranging from 2 to 10 percent from 2008 to 2017 compared to inflation values between 0 and 2 percent. This picture has changed significantly, at least temporarily, since the introduction of online submission with one non-character-coded document in 2020: the sharp drop of 20 percent corrects the old trend. However, with the latest change, the EPO returns to a rate above 5 percent, although here the inflation rate to be contrasted is not yet known. Hopefully, future fee changes will stop the trend and remain below the rate of inflation.

 

Graphic: Development of filing fees

Also this year Christian W. Appelt will speak at the 20th Düsseldorfer Patentrechtstage 2022 and will present the “Current Decision Practice of the Boards of Appeal of the EPO”

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The event will be held as an online event in the form of a Zoom video conference from 24 – 25 March 2022. In addition to the traditional overview of the current decision practice of the boards of appeal and the courts, this year’s ”Patentrechtstage” will focus on the approaching start of the Unitary European Patent System and the challenges associated with it. A second focus of the conference is the controversially discussed question of patent protection for “vaccines”.

Details of the event can be found here.

Dr. Martin Schaefer will speak on 18.03.2022 at the online conference of the University of Illinois Chicago and the George Washington Law School

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“Music Copyright Infringement in Europe” is the title of the session in which BOEHMERT & BOEHMERT partner and attorney at law Dr. Martin Schaefer will participate as a panelist in context of the “Music Copyright Conference” on 18th March.

The subject of the online conference of the George Washington University Law School’s Intellectual Property Program and the University of Illinois Chicago Law School is to spark new insights into adjudicating music infringement disputes, as well as those involving other genres of expression, in various national copyright systems in Asia, Europe and North America.

The panelists will discuss substantial similarities in the systems, but also different national approaches to fair use of musical works of art, performers’ rights, copyright or expert evidence.

With the aim of a qualified exchange on national copyright regulations and musical expertise, the online event is aimed at both academics and practitioners in the field of copyright as well as musicologists and music theorists.

Participation in the conference is free of charge. Interested parties are asked to register here.

“General Court overrules previous instance: No likelihood of confusion between CODY’S and CODE-X for marks in beverages sector” – Article by Dr. Florian Schwab in WTR

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On the online portal of the trade journal World Trademark Review (WTR), BOEHMERT & BOEHMERT partner Dr. Florian Schwab discusses a recent trademark law decision of the General Court in (T-198/21) Ancor Group GmbH v. European Union Intellectual Property Office (EUIPO) of February 23, 2022. 

The court set aside the decision of the Board of Appeal of the EUIPO and – upholding the decision of the Opposition Division – finally rejected the opposition based on the word and figurative marks CODY’S against the word mark CODE-X (essentially each claiming beverages in class 42 of the Nice classification). 

In contrast to the Board of Appeal, the European judges found no likelihood of confusion between the marks. They based their decision primarily on the fact that CODY’S and CODE-X are visually and phonetically similar, at most, to an average degree. The hyphen creates a syllabic and visual break, which does not apply to the apostrophe. For goods in the beverage sector, it cannot be assumed that they are primarily ordered orally (for example in a busy and noisy bar where phonetic differences may not be clearly perceived) and, thus, the phonetic comparison is not per se primarily relevant. 

In Dr. Schwab’s opinion, the result reached by the court is convincing. It is worth noting that the overruling of the Board of Appeal is more the exception than the rule in EU trademark matters. 

The full article in English is available online for registered users of WTR here!

UPC: Changes to the legal framework for action against cross-border supply chains

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Strategic thoughts on contributory patent infringement ahead of the entry into force of the Agreement on a Unified Patent Court

The legal framework for actions against cross-border supply chains in Europe that precede the use of a patented object will change significantly with the forthcoming entry into force of the Agreement on a Unified Patent Court (UPC).

The current legal framework

Under the current legal framework, European patents unfold their protective effect at national level. Owners of a granted European or national patent can ban third parties from using the patented object within the territory of a country in which the patent is in force. In practice, this means that in the event of cross-border patent infringement, infringers can only be sued in individual countries and usually are only made accountable for actions taking place in the country in which the infringement lawsuit is filed. There is currently no possibility of centrally enforcing a patent for the whole of Europe.

This territoriality principle of European patents is about to change with the entry into force of the Unified Patent Court (UPC), expected in mid-2022. The UPC creates a new legal framework in which European patents granted by the European Patent Office can be validated as so-called “unitary patents” which have unitary effect throughout the UPC territory.

The legal instrument of contributory patent infringement allows a patent proprietor to prohibit the use of means which constitute no patent infringement by themselves, but which are suitable and intended for the use of the patented invention. For example, if a patent protects a device G that must have elements A, B and C, the patent proprietor can sue a competitor M who manufactures, offers, introduces into the market or either imports or possesses for these purposes a device having all three elements A, B and C, which are essential for the invention G, for direct patent infringement. Furthermore, a supplier L of the competitor M who supplies the element C to the competitor M and thereby makes the patent infringement possible, is also liable for contributory infringement and can be sued by the patent owner.

Under the current legal framework of most European jurisdictions, a claim against the supplier L in this example case is subject to a double territorial requirement: A contributory patent infringement by supplier L must be assumed if both the supply or offer of element C to competitor M and the subsequent (direct) patent infringement by competitor M, e.g. manufacture or marketing of device G with elements A, B and C, take place in the “domestic territory” of the patent-protected jurisdiction (cf. Sec. 10(1) Patent Act, Art. 60(2) of the UK Patent Act or Art. L613-4 of the French Patent Act). As a rule, contributory patent infringement must be discarded due to lack of this double territorial requirement if the transfer of element C to competitor M or the marketing or manufacture of device G by the competitor M takes place abroad.

For owners of a patent with effect in Germany, i.e. of a European patent in force in Germany or of a German national patent, the case law of the German Federal Court of Justice dictates a patent proprietor-friendly approach to the double territorial requirement: Accordingly, a contributory patent infringement can also be assumed when a supplier L supplies elements C to a competitor M if this competitor M manufactures the patent-protected device G – using the elements C supplied by L – with the elements A, B and C, be it abroad or in Germany, to subsequently offer or market the device G in Germany (BGH 30. 01.2007 X ZR 53/04 – Funkuhr II). As long as the competitor M ultimately implements a direct patent infringement in Germany, cases in which the supplier L is located abroad and offers or supplies from there to Germany, and even cases in which the supplier only acts abroad but knowing that the destination of the supplied means is Germany, are also covered (BGH 03.02.2015 X ZR 69/13 – Audiosignalcodierung).

With the above-mentioned decisions, the German Federal Court of Justice weakened the double territorial requirement for contributory patent infringement in Germany for the benefit of patent holders. In practice, this means that owners of patents with effect in Germany can take action against domestic or foreign suppliers of a domestic or foreign competitor who sells or offers the patented product in Germany, even if the patented product is assembled or manufactured abroad.

However, cases in which the competitor M ships the patented product to a third European country are in any case not covered. In such cases, the patent holder cannot currently take any action against the supplier L before the German courts. For example, a German supplier L who provides element C, for example, to a Romanian competitor who manufactures the German-patented device G (with elements A, B and C) in Romania, for example, and sells it in Italy, cannot currently be held accountable before the German courts.

The new legal framework

The relevant territorial criteria for contributory patent infringement will change significantly with the entry into force of the UPC.

For contributory patent infringement under the UPC, the term “domestic territory” of the respective national patent law will be replaced by the term “territory of the contracting member states” (cf. Art. 26(1) UPC Agreement). Accordingly, contributory patent infringement will not require a double domestic relation to a single state. Instead, the new legal framework for contributory patent infringement in Europe will only require that both the supply or offer and the subsequent direct patent infringement take place within the borders of the UPC territory. Under the UPC, delivery/offer and patent-infringing use of the delivered/offered means may thus take place in different UPC states.

For our example case (German supplier delivers element C to Romanian competitor who purchases C, uses it to manufacture G and sells the patented device G in Italy) both the delivery and the sale of the patented product G take place within the “territory of the contracting member states”, as Germany, Italy and Romania are all member states of the UPC. In this respect, the owner of a unitary patent in this example case could not only enforce their patent against the competitor M for direct infringement, but also against the supplier L for contributory infringement.

Thus, from the entry into force of the UPC, it will become possible for patent owners to take action against cross-border supply chains within Europe, which do not constitute an act of infringement under the current legal framework.

The 24 member states of the Unified Patent Court Agreement are: Austria, Belgium, Bulgaria, Cyprus, Technical Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Romania, Slovakia, Slovenia and Sweden. These states will form a territorial unit according to the UPC.

The EU states that are not part of the Convention are: Croatia, Poland and Spain. Other UPC states that are not EU states and therefore not part of the Convention are: Iceland, Norway, the United Kingdom, Switzerland, Turkey, Serbia, Albania, Montenegro, and Northern Macedonia.

The new strategic role of German national patents

The new UPC courts, under the lead of the central Board of Appeal in Luxembourg, will have to develop their own case law on all relevant issues of substantive patent law over time. It initially remains uncertain whether and, if so, to what extent the principles developed in German case law on contributory patent infringement will be adopted by the UPC courts. In view of the strong role that German judges and courts are expected to play in the new system, this is a realistic possibility, but it cannot be assumed with certainty at this early stage.

The currently applicable national legal standard of contributory patent infringement, which in Germany relies on Sec. 10(1) PatG, as well as the German case law applicable to it, will continue to be valid for German national patents in any case. This applies in particular to the above-mentioned – rather patent owner-friendly – extended concept of “domestic territory” for contributory patent infringement, which is applied by the German courts, mainly in the light of the decisions Funkuhr II and Audiosignalcodierung of the German Federal Court of Justice.

In practice, this means that European unitary patents and German national patents will cover different cases of contributory patent infringement from the entry into force of the UPC.

It should also be emphasised that the prohibition of double protection (Art. II § 8 IntPatÜG) will be abolished for unitary patents with the effect that patentees will be entitled to protect the same invention simultaneously by a European unitary patent and by a German national patent, even with identical patent claims. This possibility paves the way for new strategic considerations for patent proprietors who want to optimise their legal position.

Holders of a European unitary patent will be able to take action against suppliers based in a first UPC state who provide essential elements of the protected invention to a manufacturer or seller of a patented product based in a second UPC state. The first and second UPC states may be the same state or different states.

However, it is currently uncertain whether a European unitary patent will allow taking action against supply chains that take place at least partly outside the UPC territory ahead of a direct patent infringement in the UPC territory, for example, if a supplier delivers to a manufacturer or seller located outside the UPC territory, for example, in the United Kingdom, Spain or China, even if the latter later goes on to use the patented product within the UPC territory directly infringing the patent.

For owners of German national patents – or of German utility models – it will continue to be possible to take action against suppliers of a competitor who uses a patented product in Germany in the cases covered by the extended concept of domestic territory defined by the German case law. For example, it will still be possible for owners of a German national patent to take action against a supplier based in Germany who, according to our example, supplies element C to a competitor based in Spain, the United Kingdom or China who manufactures the patented device there to then re-import it into Germany. The same applies to a supplier located in Spain, the United Kingdom or China, for example, who supplies element C to a competitor located in Germany or elsewhere, who then sends the patented device G to Germany.

Conclusion

European unitary patents and German national patents may cover different cases of contributory patent infringement from the entry into force of the UPC, at least while the UPC courts develop their own case law.

All actors operating on the European market, in particular patent proprietors and potential patent infringers, are well advised to develop their own strategy taking into account the new legal framework in view of the new risks and opportunities.

Patent owners with important economic interests in Germany who want to remain capable of acting against the suppliers of their competitors should ideally complement the protection conferred by European unitary patents with parallel German national patents. For existing European patent applications, the option of branching off a German utility model may be worth considering.

Further details on the European Unitary Patent and the Unified Patent Court can be found at  https://www.boehmert.de/en/news-knowledge/upc-update/detail/getting-your-patent-portfolio-ready-for-the-upc/ /.

Dr Martin Schaefer will speak at the Life Webinar presented by the International Chapter of the Copyright Society and ALAI Germany on March 10 

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Kraftwerk, Hip-hop, Prince, & Warhol: European & US Approaches to Sound Sampling & Appropriation Art- this is the topic of the Life Webinar with Dr. Martin Schaefer as moderator.

The part he will moderate is about the “metal-on-metal” legal dispute, which has been pursued by a member of the cult band “Kraftwerk” for three decades and has so far been before the Federal Court of Justice (BGH) four times, the Federal Constitutional Court once and the European Court of Justice once, and which is about a sample from a Kraftwerk song in a hip-hop recording. The complete program and the possibility to participate in this event in English can be found here.

Who’s Who Legal Germany 2022: Awards for three BOEHMERT & BOEHMERT attorneys

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Honour for Prof. Dr. Heinz Goddar as “National Leader Germany – Patent Agents 2022” and for Dr. Volker Schmitz-Fohrmann and Dr. Florian Schwab as “National Leader Germany – Trademarks 2022”.

In the current ranking of “Who’s Who Legal”, three BOEHMERT & BOEHMERT partners are mentioned in praise.
BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar is honoured as “National Leader Germany – Patent Agents 2022”.
BOEHMERT & BOEHMERT attorneys at law Dr. Volker Schmitz-Fohrmann and Dr. Florian Schwab were awarded the honour of “National Leader Germany – Trademarks 2022”. The trade magazine thus includes the two attorneys in a circle of 91 experts selected for Germany.

The Ranking of Who’s Who Legal is based on recommendations from clients and private lawyers who annually select the most important experts in numerous practice areas around the world. According to the panel, listed attorneys are well-versed in contentious and non-contentious matters, including infringement, enforcement, developing and managing portfolios.

The ranking of BOEHMERT & BOEHMERT attorneys can be viewed online here.

Chambers Global 2022: BOEHMERT & BOEHMERT awarded again

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Listing in Band 2 for “Intellectual Property: Patent Prosecution in Germany”. Prof. Dr. Heinz Goddar honoured as “Senior Statespeople”.

In the newly published edition of the handbook “Chambers Global 2022”, BOEHMERT & BOEHMERT is recommended as one of the leading law firms in the categories “Intellectual Property: Patent Prosecution in Germany” (Band 2) and “Intellectual Property: Trade Mark & Unfair Competition in Germany” (Band 4).

It is said that BOEHMERT & BOEHMERT is particularly well known for handling patent applications and represents clients from the fields of electrical engineering, mechanical engineering, life sciences and technology. Further areas of expertise are trade mark applications and unfair competition law. In addition, the firm supports the protection of designs and advises on the management of worldwide trade mark portfolios, lebelling issues and licensing matters.

Prof. Dr. Heinz Goddar receives special mention as a “senior statespeople”. Heinz Goddar has a longstanding reputation as a household name for patent prosecution matters, the jury says.

About Chambers Global
Chambers Global lists the best lawyers and law firms in over 200 countries around the world. The rankings are based on the in-depth research of a dedicated and experienced team of researchers.

You can access the BOEHMERT & BOEHMERT ranking online here.