The German Federal Supreme Court rules on World of Warcraft

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Computer games are becoming more and more important, not only in everyday life but also in legal theory. The German Federal Supreme Court (BGH) has now issued a decision on the online game World of Warcraft (I ZR 25 / 15 – World of Warcraft I). In this decision, the Court addressed questions regarding the interaction between software copyright, copyright contract law and general contract law.

The decision is to be interpreted against the background of the SAS decision of the Court of Justice of the European Union (C-406 / 10 – SAS Institute Inc./ World Programming Ltd), as well as the Half Life decision of the Federal Supreme Court (BGH, MMR 2010, 771 – Half Life 2) and the series of decisions regarding so-called used software (the UsedSoft cases) (C-128 / 11 – UsedSoft / Oracle; BGH, GRUR 2011, 418 – Used Soft; BGH, GRUR 2014, 264 – Used Soft II; BGH, GRUR 2015, 772 – Used Soft III). Finally, Germany has a robust law with regard to general terms and conditions which has to be interwoven into this set of legal questions and which has a significant impact on the dogmas of copyright contract law.

The issue in dispute addressed in this decision relates to typical online games, in addition to the game Diablo (one of the most well-known) and the computer game World of Warcraft. Such games sometimes achieve more revenue than a Hollywood film. As with all computer games, they comprise – in addition to the software controlling the game – what the Federal Supreme Court has termed game data, i.e. graphics, music and text, but also – as expressed by the Federal Supreme Court – “film sequences” and “models”. These types of games are always operated with so-called EULAs (end user licence agreements). In the case in question, the EULA for the computer game World of Warcraft contains the phrases that rights of use granted would be “revocable” and “not transferable” and also an express ban on pursuing a commercial purpose with the game. The EULA for the computer game Diablo also contained an express ban on the use of so-called bots. Bots are themselves computer programs; their purpose is to enable automation with which the player can further develop his game character simply and without time-consuming and – as the Federal Supreme Court puts it – “playfully charming” actions. They are widely distributed in online games. In the case at issue, the defendant operated bots of this kind.

The only issue in dispute was the unauthorised duplication of the computer games. The claims before the Federal Supreme Court only concerned copyright law. Claims of a contractual nature had in the meantime been referred to another court.

In accordance with the implementation of representative action and with regard to issues of the abuse of legal rights due to various other pending proceedings, which are not of interest here, the Federal Supreme Court first addressed an important topic in practice, the definition of the writ of summons in disputes regarding computer programs and other technical subjects. The Federal Supreme Court emphasised that a writ of summons is only adequately defined within the meaning of § 253 of the German Code of Civil Procedure if it uses general terms to describe the action to be prohibited. Nevertheless, it is a prerequisite that the meaning of the terms used not be in doubt, with the result that the scope of the claim and decision is certain (I ZR 25 / 15, marginal number 29 – World of Warcraft I). This aspect of jurisprudence, which up to now has fundamentally applied to questions of competition law, can now also be used in copyright law, as designations such as the name of the software and (also in detail) a restriction “for commercial purposes” are adequately defined within the meaning of the case law of the Federal Supreme Court (I ZR 25 / 15, marginal number 30ff. – World of Warcraft I).

After this procedural recital, the Federal Supreme Court next addressed the object of protection in the dispute, namely the computer game. It is at this point that we already start to see the unanswered questions that the decision generates. The Federal Supreme Court started its discussion regarding the object of protection by saying that it is talking about the “client software” for the online games “World of Warcraft” and “Diablo 3”. It then goes on to state that this software consists of not only a computer program, but also of audiovisual game data. Even this formulation is imprecise as it is not the client software that consists of a computer program and game data, rather the computer game itself consists of the computer program controlling it and the game data that enables the game result. It is true that the Federal Supreme Court differentiates between the components of a computer game, i.e. the text and the music among other things, and argues that these components can be protected by copyright “or participate in the originality of the overall work and enjoy copyright protection together with the latter” (I ZR 25 / 15, marginal number 34 – World of Warcraft I with reference to CJEU, C-355 / 12, marginal note 23 – Nintendo / PC-Box and 9net and BGH, GRUR 2013, 1035, marginal note 20 – Videogame / Consoles I amongst others). Unfortunately, however, the Federal Supreme Court does not continue with this statement. Although it recognises that a computer game represents an overall whole unit consisting of several components relevant under copyright law, it does not address the question as to whether separate complete work protection applies to this overall whole unit or whether each of the parts enjoys individual protection. This would have been important to clarify the question as to whether the separate respective copyright standards apply for each of these components of the overall whole or whether – as supported by Bullinger and the authors – one must decide on certain issues under copyright law and one cannot cumulatively use all the feasible applicable copyright law standards (Bullinger /Czychowski, GRUR 2011, 19, 22–24). It is too simplistic for the Federal Supreme Court to refer in this respect to the CJEU’s Nintendo decision; this had not recognised the importance of the question and is not immediately relevant in this case (I ZR 25 / 15, marginal number 34 – World of Warcraft I with reference to CJEU, C-355 / 12, marginal note 23 – Nintendo / PC-Box and 9net).

The fact that the Federal Supreme Court is not consistent in this respect is also evident from its arguments with respect to the intrusions into the rights of the computer game manufacturer. It identifies the latter as duplication rights and does not quote either § 16 or § 69c (1) of the UrhG (German Copyright Act), but instead talks about a “duplication of the client software” in accordance with §§ 69c (1), 15 (1), of the UrhG (I ZR 25 / 15, marginal number 36 – World of Warcraft I). It therefore cumulatively uses general rights of use under copyright law with the special duplication right for computer programs, without differentiating which right is to be applied to which component of the computer game.

The Federal Supreme Court quite rightly makes clear in this context that the mere display on the screen of works contained in the client software does not represent independent duplication, which is completely in line with existing case law up to this point and with overwhelming opinion in the literature (I ZR 25 / 15, marginal number 38 – World of Warcraft I).

A dogmatic but fully correct position is then taken by the Federal Supreme Court as to whether there is a justification for the manufacture of automation software and the use thereof, if not in the licence agreement (cf. under Clause 3 in this respect), then from § 69d (3) of the UrhG. It outlines the scope of § 69d (3) of the UrhG, which has only been the subject of a few decisions, and states that § 69d (3) of the UrhG only covers forms of program analysis that are not connected with an intrusion on the program code (I ZR 25 / 15, marginal number 57 – World of Warcraft I). This can be readily agreed with – in particular the Federal Supreme Court makes clear that invoking § 69d (3) of the UrhG does not require access to the source code and certainly does not grant this (I ZR 25 / 15, marginal number 61 – World of Warcraft I).

The Federal Supreme Court thus goes so far as permitting duplications via § 69d (3) of the UrhG that go far beyond the actual objective of § 69d (3) of the UrhG, namely to enable interoperability. The Federal Supreme Court compares the current case with the CJEU case SAS Institute (I ZR 25 / 15, marginal number 61 – World of Warcraft I). In this case, the CJEU determined that functionalities of computer programs cannot be part of protection under copyright law. The Federal Supreme Court applies this idea: not only is the development of alternative software permitted, but also the development of additional software. This goes a long way, but appears to be correct according to the provisions of the Software Directive. These can be clearly recognised in recitals 10 and 15, to the effect that it wants to promote the interoperability and interaction between independently created computer programs. Even though the Federal Supreme Court does not mention this, the argument must be accepted.

The Federal Supreme Court also takes from this decision that, in the current case, the manufacture of automation bots in accordance with § 69d (3) of the UrhG would actually be permissible even though commercial use had been banned under the licence agreement (as general terms and conditions, although not included) (I ZR 25 / 15, marginal number 63 – World of Warcraft I). It is clear at this point that the plaintiff has achieved a pyrrhic victory, as the Federal Supreme Court is basically of the opinion that the development of bots in accordance with § 69d (3) of the UrhG is permissible – a very broad view.

This article was first published on the Kluwer Copyright Blog.

CJEU Filmspeler: Landmark ruling on streaming and preparatory acts to copyright infringements

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CJEU Filmspeler is a ground-breaking copyright decision in many ways. By qualifying the distribution of technical devices (intended to make streaming of copyright infringing content possible) as a making available of works to the public, the CJEU has once again shown that it interprets exploitation rights broadly and from an economical point of view. Furthermore, the CJEU has clarified that streaming on structurally copyright infringing websites is a copyright infringement itself. CJEU Filmspeler is a good decision for rights holders and could even become a game-changer with respect to enforcement of copyrights.

CJEU Filmspeler (ECLI:EU:C:2017:300, judgment dated 26 April 2017, Case C-527 / 15 – Stichting Brein [Filmspeler]) is a groundbreaking decision in many ways. It concerned the distribution of a multimedia player (sold as “Filmspeler”, Dutch for “film player”) in the Netherlands enabling its users to stream copyright infringing content on their TVs and the question of whether individuals streaming clearly copyright infringing content violates copyright by doing so.

Preparatory acts to copyright infringements can be copyright infringements themselves

First, the CJEU has ruled that the mere distribution of technical devices enabling the user of the technical device to stream copyright infringing content itself violates of the right of making works available to the public. This means that preparatory acts alone can constitute copyright infringement, if they are aimed at enabling copyright infringement. Also, the CJEU has confirmed earlier decisions according to which statutory copyright provisions have to be interpreted broadly and rather from an economic than from a technical or formal point of view to ensure a high level of copyright protection.

Streaming is illegal reproduction and therefore a copyright infringement

Second, the CJEU ruled that streaming of clearly copyright infringing content violates the author’s right of reproduction in his or her respective work. No legal exception for reproduction through streaming applies. By this, the priorly prevailing opinion in Germany considering mere streaming of illegal content to be legal is clearly overruled.

CJEU Filmspeler could have wide-reaching consequences on liability for copyright infringements in general

Furthermore, CJEU Filmspeler could have great influence on the general classification of acts contributing to copyright infringements. The German Federal Supreme Court (BGH) differentiates between perpetrators, (persons who directly perform the infringing act), aiders (persons willfully contributing to the infringing act) and abettors (persons abetting others to commit infringing acts) and “Stoerer” (persons causally contributing to the infringing act without doing this (necessarily) willfully), who unlike perpetrators, aiders and abettors are not liable for damages. This differentiation may be inconsistent with CJEU Filmspeler. It appears that the CJEU considers every person who is willfully (and substantially) contributing to copyright infringing acts to be a perpetrator. It remains to be seen if the German Federal Supreme Court will react to CJEU Filmspeler. Until now, the BGH has been of the opinion that the classification of persons contributing to copyright infringements as perpetrators, aiders, abettors or “Stoerer” is not regulated by EU law and can therefore freely be determined by German courts. However, this opinion seems difficult to reconcile with CJEU Filmspeler.

CJEU Filmspeler could favour website blocking through access providers

Lastly, CJEU Filmspeler may substantially affect future website blocking cases against access providers. So far, the BGH opines that it is unreasonable to require access providers to take any blocking measures if the rights holder cannot prove that he has taken sufficient actions against the operators of the structurally copyright infringing website to be blocked and the hosting provider of that website (BGH, GRUR 2016, 268 n. 82 et seq., – Stoerer-Liability of the Access Provider). This factual subsidiarity requirement of the BGH can (partly) be justified on the grounds that access providers have no contractual relationship to the perpetrators and are therefore “far away” from the infringement. The BGH did not consider copyright infringements by users through streaming in its decision.

Since streaming is a copyright violation (by reproduction) under CJEU Filmspeler, the BGH will now have to consider copyright infringement by users through streaming. This will put access providers much “closer” to infringing copyrights. Furthermore, since access providers are contractual partners of the individuals streaming, they may be infringing copyrights by simply providing internet access. Consequently, the factual subsidiarity requirement of the BGH could fall in cases against access providers or at least be limited to requiring them to prove that sufficient action has been taken to hold the operators of the structurally copyright infringing website liable.

Conclusion

By qualifying the distribution of technical devices (intended to make streaming of copyright infringing content possible) as a making available to the public, the CJEU has again shown that it interprets the making available right broadly from an economical point of view, as opposed to a less technical or formal one. Furthermore, the CJEU has clarified that streaming on structurally copyright infringing websites itself constitutes copyright infringement. Even though the decision gives answers to important questions, it also raises a number of new legal questions. In sum, however, CJEU Filmspeler can be regarded a good decision for rights holders and may even become a game-changer with respect to copyright enforcement.

Reform of copyright contract law enters into force

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On 1 March 2017, the reform of German copyright contract law took effect. The reform brings along new challenges, in particular, new claims to information and accountability as well as new provisions regarding the granting of exclusive rights. Specific changes regarding the remake right are of particular interest for the film industry.<

Why another reform?

The (previous) reform of copyright contract law in 2002 fundamentally revised German copyright law in the interests of strengthening the rights of authors. It introduced the claim for “reasonable remuneration” (§ 32 German Copyright Act, “GCA”) of authors and performing artists. In addition, the instrument of “common remuneration rules” (§ 36 GCA) was created. This has made it possible for associations representing authors and performing artists to establish agreements on appropriate branch specific adequate fees with user-associations.

From the legislature’s viewpoint, the 2002 reform failed to strengthen authors’ rights. In particular, the legislature identified a “disrupted contractual parity” as problematic. As a result, creatives were still required to partly enter into contract terms, wherein they transferred the exclusive rights to a work for an unreasonable one-time payment (“total buy-outs”). In particular, self-employed authors and performing artists lacked the necessary market and negotiating power to actually enforce their right to reasonable remuneration. Consequently, authors and performing artists were receiving unreasonably low remuneration. Against this background, the legislature sought to strengthen the protection of authors and performing artists with the current reform.

It goes without saying that the above mentioned assumptions were highly controversial during the legislative process. Publishers, producers, etc. have repeatedly pointed out that the principle of participation does not necessarily work in the creative’s favor. Authors and performing artists often prefer a (final) one-off payment immediately after they deliver their contribution rather than a participation solution in which they depend on the success or failure of production. It should, however, be noted that the copyright industries were not able to assert their objections in the legislative process.

An overview of the most important changes

The legislative reform entails an increase of legal provisions at the expense of copyright industries. To the extent that the amendments to the law were designed by the legislature as mandatory rules, they can only be waived or attenuated in favor of collective agreements within the meaning of Art. 36 GCA. This entails joint remuneration provisions between associations of creatives and users. Some industries do not have representative associations. The German Federal Court (BGH) recently decided that collective agreements with non-representative associations only have a limited scope (BGH GRUR 2016, 1296 – GVR Tageszeitung III). Thereby the tightened legal rules are not yet alterable by mutual consent in these industries. On the contrary, they are unremittingly obligatory.

New claims to information and accountability – Articles 32d, 32e of the new German Copyright Act (GCA new)

One of the main changes is the introduction of two new claims to information.

The new § 32d GCA new implements an author’s claim to information and accountability against his contractual partner. This extends to the scope of the use of the work and the income derived from it. Accordingly, an author who has licensed or assigned his right to another against payment of a fee can annually request information and accountability on the extent of the use of the work and the income and benefits derived from it.

This request for information applies to all cases of transfers and assignments of rights of use, even in the case of fixed fees. Previously, contractual partners were not required to provide information in case of a fixed remuneration, according to rulings of the German Federal Court.

Corresponding to the wording of the introduced claim, the duty to provide information and accountability refers to such information that is normally already available to the contractual partner “within the scope of the proper course of business”.

The statute provides some exceptions from the duty to provide information. For instance, authors or performing artists will not benefit from the new claim when their contribution to the respective work, production or service was minor (i.e. of “subordinate importance”). According to the statute, a contribution is “subordinate” especially “if it has little influence on the overall impression of a work”. For instance, it is not part of the representative content of a work. According to the grounds of the draft bill (decision of the 6th Committee on Legal Affairs and Consumer Protection), the concept of “subordinated contribution” does not entail a qualitative evaluation. As examples of “subordinate contributions”, the draft mentions a minor text contribution by a journalist or the appearance of extras in a film. The exact criteria of a “subordinate contribution” and when this is exceeded will have to be defined by case law. Another exemption to these claims is established for authors of computer programs (§ 69a (5) GCA new). Referring to the industry’s high demand for employees, the legislature is less worried about the contractual parity between creators and their contractual partners in the software industry than in other creative industries. Finally, the claim to information is precluded if its disclosure would be disproportionate for the contractual partner. This may be the case if the provision of the information appears unacceptable to the contracting party, if there is an opposing legal obligation, if the assertion of the claim is a misuse of rights, or if justified interests in the confidentiality are impaired.

The new claim to information in § 32d GCA new is compulsory in that deviating agreements detrimental to the interests of the author (or performing artist) can only be made within the framework of joint remuneration rules or collective agreements.

According to § 32e GCA new, third parties that substantially determine the exploitation in the licensing chain are also obliged to provide the respective information. An example of this would be broadcasting companies in the case of commissioned productions. The same applies to third parties who enter into the licensing chain in the “bestseller case” of § 32a GCA. Thus, § 32e GCA new widens the scope of those subject to these obligations to include businesses in the licensing chain that have no direct contractual relationship with the author.

Practical Note
Companies must be in a position to annually provide authors and performing artists with the relevant information and account for the extent of their use and their income. It is therefore advisable to review the internal processes for the provision of information (accounting, software, etc.) and, if necessary, to adjust these respectively.

Infringements of joint remuneration rules (§§ 36b, 36c GCA new)

Further amendments concern the instrument of common remuneration rules between associations of authors and associations of users.

Particular mention should be made of § 36b GCA new, which provides injunctive relief for violations of common remuneration rules. Accordingly, associations of authors or users can demand default against companies which do not comply with the applicable common remuneration rules. They start by filing a representative action. This action is not only open to authors’ associations which are parties to corresponding remuneration rules, but also to associations of users and individual users.

The newly created § 36c GCA new regulates the individual contractual penalties in case of an infringement of the common remuneration rules. Under this provision, the author may require his contractual partner to agree to an amendment of the contract by which the user deviates from a common remuneration rule to the detriment of the author. Thus, § 36c GCA new provides for a new claim to adjust a contract when companies deviate from the joint remuneration rules which apply to them.

The right to further exploitation after ten years (§ 40a GCA new)

The newly implemented § 40a GCA new provides the author with the possibility to exploit his work in further ways after the expiration of ten years. This rule applies to authors who have granted an exclusive right of use for a period of more than ten years against a lump sum payment. The right of the first entitled user continues for the remaining duration of use as a non-exclusive license. Therefore, he can continue with the current use but cannot continue such use on an exclusive basis. The original contractual partner must therefore accept and expect that the author can grant a third party a corresponding non-exclusive exploitation right. Thus, as of the 11th year, the exploitation of the work is no longer exclusive.

The new provision also allows contracting parties to agree to extend the exclusive rights to the entire duration of the contract at the earliest after five years. § 40a GCA new is also a compulsory provision. Differing agreements to the detriment of the copyright holder are only permissible in the form of collective remuneration rules or collective agreements.

Nevertheless, § 40a GCA new also contains some exceptions. The right to further use after ten years is not valid if the work in question is “only a subordinate contribution”, a computer program or a work of architecture. § 40a GCA new is also inapplicable to movie rights. Additionally, § 40a GCA new is also inapplicable when an artist gives consent granting rights concerning a work intended as a trademark (or other mark) or design.

Practical Note
A clause stipulating that the work created by the artist is intended to be a trademark (or other mark) or as a design must now be expressly included in contracts with brand designers, logo designers and product designers etc. Otherwise, the exclusivity ends after ten years and the author can otherwise exploit the work in question.

Changes to the remake right (§ 88 GCA new)

The reform also strengthens the position of authors in the area of film remakes. It grants the author the right to have his work re-filmed after ten years. This is a compulsory rule. Deviation is only possible in the form of an agreement based on a common remuneration rule. The new provision makes it impossible to grant unlimited rights to producers. However, it should be pointed out that the provision only refers to “real re-filming”, not to prequels or sequels. Producers can continue to enjoy exclusive rights of use for such subsequent films if the agreement is properly designed.

Remuneration of the performing artist for later known types of use (§ 79b GCA new)

§ 79b GCA new regulates the remuneration of (granted) rights of use for unknown ways of use. It complies with § 32c GCA, so that the performer is entitled to a separate reasonable remuneration if the contractual partner, who acquired the rights to unknown uses, takes up a new kind of use, if such use was unknown at the
time the contract was concluded. If the right of use is transferred to a third party,
the claim of the performing artist shall be subject to a separate reasonable remuneration against the third party as soon as the latter takes up the new type of use.

Entry into force on 1 March 2017

The new copyright contract law in principle only applies to contracts concluded after it went into force, (i.e. after 1 March 2017). Exceptions to this rule apply only for the right of recall due to non-exercise. In that case the new legal situation is applied to the old contracts, but only when circumstances arose one year after the entry into force.

Conclusion

Companies should examine their internal processes, and whether they are able to fulfill the annual claim to information now available to authors and performing artists. In addition, the new right to other exploitation after ten years (§ 40a GCA new) must be taken into account when drafting copyright licensing agreements. Where proper contractual arrangements have been reached, rights of use can be granted exclusively for more than ten years. In particular, an unlimited license, (i.e. unlimited in time), is still possible for works which are to be used as trademarks or for design when such purpose of the license is stated in the license agreement. In sum, the new copyright law brings along a number of challenges for companies using and exploiting copyrights and related rights. These challenges should be manageable by re-evaluating internal processes regarding information and accounting duties and diligently drafting new agreements.

G1 / 15 – the antidote against “poisonous priority”

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In its latest decision, G1 / 15, the enlarged Board of Appeal of the European Patent Office ended the possibility of “poisonous priority”. According to this decision, under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic “OR”-claim), provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitation apply in this respect.

According to the European Patent Convention (EPC), the applicant of a European patent application may claim priority of a former application disclosing the same invention (Art. 87 EPC). In addition, Art. 88(2) EPC stipulates that multiple priorities may be claimed for any one claim. Furthermore, it is laid down in Art. 88(3) EPC that if one or more priorities are claimed in respect of a European patent application, the right of priority shall cover only those elements of the European patent application which are included in the application(s) whose priority is / are claimed. That is, Art. 88(3) EPC confirms that a claim of a European patent application may cover subject matter going beyond what was disclosed in a priority application, and may then only be partially entitled to priority. Such a claim may thus in principle be split according to subject-matter having different effective dates.

These rules did not cause any major problems as long as different domains have explicitly been mentioned as alternatives (for example by a wording such as “device characterized by having element 1 or element 2”). However, some technical Boards of Appeal denied the validity of the partial priority when the subject-matters forming partial priority domains were not addressed explicitly in the claim, but were only conceptually identifiable within the scope of a generic claim term by reference to a narrower disclosure found in the priority application and merely encompassed within the scope of a broader generic claim term employed in the later filing that claims priority. A very typical example for such a situation is the broadening of a chemical formula or of a numerical range. Such a generic “or“-claim encompasses, without spelling them out, alternative subject-matters having all the features of the claim.

In the decision underlying the present case, T 557 / 13, granted claim 1 encompassed a generalization of a more specific disclosure of the priority application. Although the patent met the requirements as to original disclosure, it did not enjoy the priority date of the parent application, which thus, was prior art under Art. 54(3) EPC. Consequently, the subject-matter of claim 1 as granted lacked novelty (under Art. 54(3) EPC) in view of the very specific embodiment of one of the examples disclosed identically in the parent application and in the priority document. The embodiment described in the parent application was held to be “entitled to the claimed priority date”, whereas granted claim 1 (of the divisional application) was held to be “only entitled to the filing date of the parent application”. Similar decisions have been made in the past in comparable situations (see, for example, T 1127 / 00, T 2311 / 09, T 184 / 06 or T 1443 / 05). With the present decision, G1 / 15 a respective danger is now adverted for the future.

Conclusion

Partial priority may no longer be refused for a claim encompassing alternative subject-matter by virtue of generic expressions if the priority document discloses part of the subject-matter in a way that could be novelty destroying. In such a case, the claim is conceptually divided into two parts, the first corresponding to the subject-matter directly and unambiguously disclosed in the priority document (for which partial priority is validly claimed), and the remainder not enjoying this priority.

Update Brexit – Exit trig­gered on March 29, 2017

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The notification by the UK Government of March 29, 2017, delivered to the EU Council, is now setting the stage for the exit negotiations. These have to be concluded between the parties and ratified by the Member States and the British Parliament within a term of two years. The parties will have to consider multi-faceted issues, including IP, as we already reported in our Bulletin of July 1, 2016. Draft negotiating guidelines have been published by the Secretariat of the Council on March 31, 2017.

No breaking news yet

Nothing substantial has changed yet for IP owners but it is worthwhile to note that we seem to be getting a “hard” Brexit, meaning the UK will be withdrawing from the entire EU legal system and its freedoms in general, including the Single Market. We will provide regular updates and guidance from the perspective of a European firm serving many client interests in the UK. Brexit uncertainty is hitting business confidence, albeit not very hard so far: The number of UK trade mark applications increased by about 10 % compared to the years preceding Brexit, as recently reported by UK IPO. Numbers at EUIPO have also increased, however. Also, there has been a slowdown in business investment in the UK which fell by 1 % by the end of 2016 compared with the three months up to the end of September, according to the UK Office for National Statistics. Economy in general and IP owners more specifically apply a “wait and see”-approach which seems reasonable for the time being.

No news is not good news

However, due to political dispute and measures taken by the parties, the starting point for exit negotiations is not promising. Even though all stakeholders seem to agree that IP rights are too important to lose sight of, we do not know how EU Trade Marks, Registered Community Designs and Plant Varieties will be addressed and “converted” into the national UK legal system and what costs the right owners will have to incur. Different approaches are discussed by stakeholders, including

  • entering EU rights into the UK registers automatically by Brexit instrument,
  • entering them upon right owners’ request only, or
  • establishing continuation of effect of EU rights and legal framework in the UK,

to name the most popular. These are models that have been seen in the past and which should not cause many implementation issues. Some augurs predict a “dirty” Brexit without a formal agreement with the EU. This would almost certainly exclude the models 1 and 3 above, and model 2 would be available upon payment of a fee. But there is little evidence so far to suggest that a dirty Brexit is going to happen. The far more relevant practical issues for right owners post-Brexit include

  • Extent of “conversion” – all registered and unregistered EU rights covered?
  • Limitations on free movement of goods with the UK potentially leaving the Common Market entirely?
  • Extended territorial scope of EU licenses and IP rights agreements?
  • Enforcement of EU judgments in the UK with European courts losing authority, and vice versa?
  • Further prosecution of pending cases at EU institutions and UK IPO, with loss of registrations?
  • Transitional periods for IP owners to adapt to new situation post-Brexit?
  • procedural issues considered, e.g. re-examination required, grace period of non-use transferred or renewed, novelty grace periods considered, priorities and seniorities accepted, domicile rules met and professional representation possible?

Patience required – and keeping track of developments

Whatever the outcome may be, right owners are well advised to accept that there will be no quick fix to these complex issues and that the best part of the two years’ term may very well have expired before these issues become clearer. In most cases, a down-to-earth analysis from the more neutral European perspective will do for the time being. Do not make hasty decisions by over-nationalizing your portfolio. However, where there are pending projects that may emphasize the UK, it is sensible to seek advice on how to best navigate the situation and obtain the best possible result for your IP portfolio and IP contracts.

Checklist

  • do not risk a territorial gap in filing and watch services,
  • do not abandon existing trade marks,
  • check existing IP-related contracts,
  • check use situation,
  • check legal basis of pending matters,
  • secure useful domains,
  • verify residence/representation in EU/the UK.

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.