Stuttgart Higher Regional Court rules on a claimed copyright infringement of “Happy Birthday” by modified radio spot

/in

The OLG Stuttgart has ruled that the mere adoption of the words “Happy Birthday” as well as the use of an only slightly modified original melody does not constitute copyright infringement (OLG Stuttgart, judgment of 28 October 2020 and rectification order of 17 March 2021 – 4 U 656/19).

Background

The dispute began with the 50th anniversary of a cooperative association of electronics retailers. For this occasion, the association broadcasted a radio spot in which the modified words “Zum Geburtstag für dich” (“Happy birthday for you”) were sung to the tune of the well-known birthday song “Zum Geburtstag viel Glück” (“Happy birthday to you”).

The association was then issued with a warning letter by a publishing house. The publisher claimed that this was an infringement of the processing copyright to which he was entitled (§ 3 UrhG), since he was the legal successor to the author of the German song “Zum Geburtstag viel Glück”. This song is essentially based on the American version “Happy Birthday to you”. The original American version of the song has been in the public domain in Germany since 2016 and can, therefore, be used freely by anyone. However, exclusive rights are also granted to anyone who creatively modifies such a “free” work.

The Regional Court of Stuttgart (LG) rejected a copyright infringement (LG Stuttgart, judgement of 10.09.2019, ref. 17 O 384/19). Even if there was a copyright in the lyrics and melody, this was not infringed by the association.

The Stuttgart Higher Regional Court (OLG) has now confirmed this decision.

Decision of the OLG

The OLG agreed with the Regional Court and also found that a possible infringement with regard to the lyrics and the melody had to be assessed separately. Even if the two are directly connected and exploited together, they are separate works within the meaning of copyright law.

The key to determine whether a work is protected by copyright is to establish that it was a personal intellectual creation. It is particularly important that the individuality of the creator is expressed in the work. These principles also apply to adaptations of other works. Only in cases where the adaptation itself constitutes a personal intellectual creation can the adaptor be entitled to his or her own (adaptor’s) copyright.

Everyday language and literal translations are not eligible for protection

The OLG did suggest that the text of “Happy Birthday” might be sufficiently individual and thus enjoy copyright protection. However, according to the OLG, this was not the issue in the case at hand.

In the radio spot, only the words “Happy Birthday” were taken over from the original version. Admittedly, the adoption of mere parts of a work could also constitute an act of infringement. However, it was important that the part taken over had the character of a work in itself. Unprotected parts of the text, on the other hand, could be taken and published in an altered form.

Above all, mundane lines of text which are generally linguistic terms without any particular originality or level of creation, or very short parts of the lyrics of individual songs remain unprotected (cf. marg. no. 104). In the case of “Zum Geburtstag”, it was only a matter of two words which, as a brief sequence of words, originated in general language and did not convey any particular thought or emotional content. Copyright protection was also not justified by the fact that the words in question were repeated several times (see para. 106). The adoption of the two words, therefore, did not constitute an infringement of copyright.

The translation of the original English text “Happy Birthday to you” into German did not result in anything different. In principle, a translation could also enjoy copyright protection. The decisive factor here was whether the translator had used the creative leeway available to him in an imaginative way. This might be the case with the translation of “Happy Birthday to you” as “Happy Birthday”, as it was not a strictly literal translation (cf. para. 109). However, here again only the part of the text actually taken over was to be taken into account. A translation from “Birthday to you” to “Zum Geburtstag” was more of a routine translation without any leeway of its own. Thus, the court came to the conclusion that only an unprotectable part had been taken over, also with regard to the translation.

Overall character is crucial

The OLG also found no copyright infringement with regard to the melody. Although the so-called “small coin” is also protected in musical works, the standard for the level of creativity should not be set too low here either. This principle also applies to adaptations. In this context, such changes were not protected by copyright if they were merely in the realm of craftsmanship and left the original character of the piece unchanged. In the present case, the arranger had merely adapted the original melody to the German text version. However, the “overall impression of a simple, clear, popular melody which spreads a cheerful mood” was not affected by the changes made (para. 129). Thus, the edited melody did not enjoy copyright protection.

On the other hand, it is irrelevant for the assessment of copyright protection whether the piece is registered with GEMA. Such registration takes place without prior examination.

Conclusion

As the decision has once again shown, it is difficult to find clear abstract criteria for determining when a work is protected by copyright. Rather, a multitude of criteria and the actual circumstances of the individual case are decisive for the assessment. This makes it almost impossible for creators to judge whether they may freely use certain works or parts thereof without obtaining legal advice.

However, the ruling also makes it clear that the threshold of the required level of creativity – also and especially when it comes to the adaptation of other works – must not be set too low at the same time.

Promotion in the EU, liability in Germany? – News on cross-border trademark infringements

/in

The worldwide availability of offers and ordering options is one of the great achievements of online commerce. However, the expansion of the territorial reach can also be accompanied by an expansion of liability for the infringement of intellectual property rights. The operator of an online store in another EU country has now had to learn this before the Frankfurt Higher Regional Court (judgment of March 11, 2021 – 6 U 273/19).

The store operator had – at a time when the United Kingdom had not yet left the EU – promoted a product in his Northern Irish online store under the MO trademark, which is protected in Germany for identical goods, whereby this trademark was not reproduced on the product itself or its packaging. The online store was exclusively available in English under an address with the top-level domain .co.uk and the currency was exclusively the British pound. However, the store operator advertised a “worldwide shipping” of the offered goods. A test purchaser of the owner of the MO trademark ordered the product advertised in the online store under the sign MO to Germany and the store operator delivered. Subsequently, the trademark owner and the store operator disputed whether the delivery to Germany of the product advertised in the Northern Irish online store under the sign MO constituted an infringement of the German trademark MO, if the sign MO was not used on the product itself or its packaging.

The Higher Regional Court of Frankfurt am Main overturned the decision of the first instance and found a trademark infringement. According to the judges, the mere fact that the product promoted on the Northern Irish website was delivered to Germany was sufficient to establish a sufficient “commercial effect” for an international jurisdiction of German courts and a trademark infringement in Germany. The fact that the disputed designation MO was not even reproduced on the product itself or its packaging did not seem to matter to the court.

The decision, which has become final and binding, could be the starting point for an expansion of the liability of operators of foreign online stores in Germany. Although scenarios of trademark infringements through cross-border acts of use on the Internet have been discussed in various decisions, case law has so far endeavored to set rather narrow limits here. In several decisions, the German Federal Court of Justice (BGH GRUR 2005, 431 – Hotel Maritime; GRUR 2012, 621 – Oscar) required that the infringing acts be clearly aimed at the German public or the German market, which could be expressed, among other things, in an offer in the German language, by providing German contact details or by accepting German currency. It remains to be seen to what extent the current decision of the Frankfurt Higher Regional Court is the start of a shift of paradigm. In any case, operators of online stores in other EU countries, as well as operators of German online stores that ship throughout the EU, should be aware that the EU internal market not only brings increased opportunities for sales, but also increased risks of trademark infringement, even if measures have been taken to reduce the risk in the goods offered, for example, by means of a neutral product presentation.

Decision of the Enlarged Board of Appeal of the EPO in case G 1/21 “videoconference”

/in

On July 16, 2021 the Enlarged Board of Appeal of the European Patent Office (EPO) has issued an order in case G 1/21. The Enlarged Board of Appeal found that oral proceedings before the Boards of Appeal can be held by videoconference even without the consent of the parties during the period of general emergency impairing the parties’ possibilities to attend in-person or proceedings at the EPO premises.

Case G1/21 is based on the question that has been referred to them by the Technical Board of Appeal 3.5.02 in their interlocutory decision of March 12, 2021 in the case T1807/15 which reads:

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

The question has been raised in response to the Administrative Council of the European Patent Organization having approved new Article 15a Rules of Procedure at the Boards of Appeal (RPBA) 2020, which entered into force on 1 April 2021 reading:

“Oral proceedings by videoconference

(1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request of a party or of its own motion.

(2) Where oral proceedings are scheduled to be held on the premises of the European Patent Office, a party, representative or accompanying person may, upon request, be allowed to attend by videoconference.

(3) The Chair in the particular appeal and, with the agreement of that Chair, any other member of the Board in the particular appeal may participate in the oral proceedings by videoconference.”

Article 15A RPBA 2020 opens the door for the Boards of Appeal at the EPO to summon to oral hearings by videoconference.

The order issued by the Enlarged Board of Appeal reads as follows:

“During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.”

Very notably, the Enlarged Board of Appeal limit their answer to the more broadly formulated referral question to oral proceedings during a period of general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, and to oral proceedings before the Boards of Appeal (second instance). Hence, the Enlarged Board of Appeal has limited their answer to the specific context underlying the referral case. The Enlarged Board of Appeal’s answer neither addresses the question, whether the consent of parties to oral proceedings by videoconference is required when there is no period of general emergency, nor does the answer touch on oral proceedings related to examination and opposition before the EPO’s departments of first instance.

The order clarifies that the practice of the Boards of Appeal to summon for oral by videoconference proceedings in appeal matters even without the consent of the parties based on new Article 15a RPBA 2020 is justified in the ongoing COVID-19 pandemic. Noting that Article 15a RPBA 2020 allows the Boards of Appeal to summon to oral proceedings by videoconference “if the Board considers it appropriate to do so, either upon request of a party or of its own motion”, it will have to be awaited whether the reasons to be issued by the Enlarged Board of Appeal in case G1/21 will provide additional guidance as to when Boards should find it appropriate to hold proceedings by videoconference or regarding the compliance of Article 15a RPBA 2020 with Article 116 EPC in general.

New Regulations for applications with the Chinese Patent Office (CNIPA)

/in

On October 17, 2020, the government of the People‘s Republic of China approved the fourth amendment to the Chinese Patent law (CPL), which has far reaching consequences for the quality of patent applications at the Chinese Patent Office (CNIPA). Chinese Patent law covers design applications as well as patents, utility models and aspects of trademark law.

Most relevant amendments to the Chinese patent law concern the term of protection for designs (see our separate article on the new Chinese patent law here) as well as higher maximum charges for remuneration in cases of infringement and cases of the attempt to file an application without adhering to common standards of patent filing practice which do not comply with the expectations of the Chinese government.

In brief, the most relevant changes in force from June 1, 2021 are the following:

  • Scope of protection and term of protection for designs
    The term of protection for designs (design patents) is prolonged from ten to a maximum of 15 years from the date of filing (Art. 42 CPL). The definition of designs  CPL in Art. 2will also cover partial designs as long as they describe parts of products.
  • Chinese priority for designs
    Design applications filed at the CNIPA can from now on, according to article 29 CPL and art. 30 CPL take priority from other applications filed with the CNIPA, designs as well as patents or utility models.
  • Quality control
    Art. 3 CPL asks for stricter quality control of applications filed with the CNIPA, as incentives by the Chinese government to file applications had recently effectuated a considerable amount of applications of little quality, which hindered the fair and free exchange of ideas for technical innovations.
  • Prolongation of protection in case of delayed examination
  • Higher compensation and disclosure requirement for defendants Maximum compensation for patent infringement is increased from 1 to 5 million RMB (630.000 Euro); in addition to that, significant punitive damages will be introduced. Defendants will have to face disclosure requirement for the estimation of damage calculation and the production of necessary proof if asked to by the court. Limitation period for claims for damages is increased to three years, in accordance with Chinese civil law.
  • Grace period
    The newly amended Chinese Patent Law introduces in art. 24 CPL a grace period of  six months. This amendment was introduced with respect to recent events in reaction to the global pandemic COVID-19.

In case of more than four years from the filing date or three years from the request for substantive examination compensation by way of prolongation of the term of protection will be possible. However, this will only be possible on request and for patents only.

Also visit the following link: https://english.cnipa.gov.cn/

Design applications in China from June 1, 2021 onwards

/in

From June 1, 2021 onwards, design applications in China will be subject to the new Chinese patent law. From this date onwards, design applications at the Chinese Patent Office will also be possible for parts of designs. This new possibility is one of the most important aspects of the newly reformed Chinese patent law, as it harmonizes Chinese design regulations with European and US design law as well as the international practice of design registrations.

Protection of parts of designs was up to now, unlike the usual international practice, not possible. In the past, Chinese patent law only allowed the registration of designs as whole entities in connection with usable and purchasable products. The current reform of the Chinese patent law with regard to design applications is hence a most welcome harmonization with European and international standards. It remains to be seen if drawings according to these standards will be equally accepted by the CNIPA.

Another important novelty in view of the international protection of designs is the fact that the term of protection is prolonged from previously 10 to now 15 years. Which is, of course, most welcome but still 10 years less than the maximum protection of designs at the European Union Intellectual Property Office.

Also visit the following link: https://english.cnipa.gov.cn/

The risk of repeat applications – or why the General Court upheld the cancellation of Hasbro’s MONOPOLY trademark by the EUIPO

/in

The European General Court has recently upheld a decision by the Board of Appeal of EUIPO that the EU trademark registration MONOPOLY must be cancelled for a variety of goods and services because it constitutes a repeat application of earlier MONOPOLY trademarks and, thus, the MONOPOLY registration was made to circumvent the need to demonstrate use and, therefore, in bad faith.

1.      Facts

A Croatian company (hereinafter the applicant), which apparently had an interest in applying for the MONOPOLY trademark or a similar trademark itself, attacked the word mark MONOPOLY, which had been applied for at the EUIPO in 2010 for goods and services in classes 9, 16, 28 and 41, with an invalidity application from 2015. In its application for invalidity, the applicant argues that the MONOPOLY word mark constitutes an application in bad faith because the challenged mark is a repeat application of MONOPOLY word marks filed by Hasbro with EUIPO in the past. The renewed application was therefore made in bad faith with the intention of circumventing the obligation to demonstrate the use of the trademark. The Cancellation Division of EUIPO rejected the cancellation request, reasoning that the protection of the same mark within a period of 14 years is not per se an indication of the trademark owner’s intention to circumvent the need to demonstrate use and that, moreover, the applicant had not proved its allegation of Hasbro’s bad faith at the time of filing. The applicant filed an appeal against this decision. The Board of Appeal ordered cancellation of the MONOPOLY mark for all the goods and services that had already been claimed by earlier registrations of the MONOPOLY word mark. Hasbro brought an action against this decision of the Board of Appeal before the General Court.

2.     Decision of the General Court

By decision of April 21, 2021, the General Court (case number T633/19) confirmed the decision of the Board of Appeal and dismissed Hasbro’s action.

The General Court makes clear that the obligation of the trademark owner to use its trademark is a fundamental principle of European trademark law and is the justification for the monopoly right of the trademark owner granted by the EU Trademark Regulation after the expiration of the five-year grace period for use, which gives the trademark owner time to market the goods or services under the trademark. To that extent, acts intended to circumvent that obligation to prove use of the mark would fall under the concept of bad faith. Hasbro itself admitted at the hearing before the Board of Appeal that it had filed the trade mark application in order to avoid having to prove use of the mark in each individual case, which, moreover, according to Hasbro, is a widespread and accepted practice in economic life. The fact that Hasbro had put forward other arguments in support of its filing strategy was not sufficient to dispel the finding of bad faith. Hasbro’s conduct aimed at circumventing the rules on proof of use suggests its intention to distort and unbalance the trademark system established by the EU legislature. However, the General Court emphasized that EU trademark law does not in principle prohibit repeat applications or that every repeat application already indicates bad faith on the part of the trademark owner. Rather, it always depends on the circumstances of the individual case.

3.     Lessons from the decision of the General Court

Even if the General Court emphasizes that it depends on the circumstances of the individual case and that Hasbro undoubtedly contributed to the cancellation of its MONOPOLY trademark by its own argumentation, the decision of the General Court is at least of great importance for the application strategy with regard to EU trademarks. Thus, trademark applicants should exercise utmost caution in applying for the identical mark for the same goods and services already covered by earlier registrations. However, as the PELICAN decision of the General Court shows (Judgment of 13 December 2012 in Case T‑136/11), the applicant can already avoid the accusation of filing a repeat application in bad faith by making minor changes to the mark (in the specific case, changing the figurative element), citing the need to modernize the mark. In Germany, there has not yet been any supreme court ruling on the question of the admissibility of repeat applications, although the problem has been discussed in the legal literature for decades.

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

/in

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

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

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

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

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

/in

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

Background

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

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

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

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

Decision of the Enlarged Board of Appeal

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

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

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

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

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

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

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

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

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

Conclusions

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

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

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

/in

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

/in

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

1. History of the case

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

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

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

2. Decision of the ECJ

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

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

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

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

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

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