In Edition 5/2018 (p. 134), Dr. Rudolf Böckenholt explains the decision of the Saarland Higher Regional Court which held that, in accordance with §8(3)(2) UWG, associations must set out their active legitimation regarding member structure without giving rise to an actual presumption from previous actions against third parties. 

The magazine GRUR-Prax can be accessed from the publisher. More details can be found at.

Abrogation of Reduction of Fees for Non-European International Search Authorities (ISAs)

In 2005, the European Patent Office (EPO) reduced the fee for the supplementary European search for a patent application under the Patent Cooperation Treaty (PCT) if the international search report was drawn up by the national patent offices of the US, Japan, Korea, China, Russia, or Australia.

The Administrative Council has now abrogated this decision, and hence a reduction of the fee for the supplementary European search no longer applies for these cases. In the future, the full fee for the supplementary European search in the amount of 1,300.00 EUR must be paid.

The changes enter into force on April 1, 2018 and are applicable for all PCT applications where the regional phase thereof is entered on April 1, 2018 or later. Thus, applicants of PCT applications in the international phase, for which an international search report was drawn up by one of the above-mentioned patent offices, should consider performing the steps necessary for entry of the regional phase at the EPO by March 31, 2018 at the latest in order to still benefit from the reduced search fee.

The fee reduction for the supplementary European search remains unchanged in cases where the international search report was drawn up by an office being part of the ’European Partnership’ (currently the national patent offices of Spain, Sweden, Finland, Austria, and Turkey, as well as the Nordic Patent Institute and the Visegrad-Patent Institute).

Fee Incentives for the Implementation of XML

The EPO desires to establish online filing using the character-coded format (XML) as the standard format for filings. In order to make this more attractive, the EPO will allow filings in DOCX, the character-coded format that most users use for their daily work. The EPO has announced that it will provide an electronic tool that, starting on April 1, 2018, will make it possible to file online both applications and later filed documents in DOCX. Furthermore, the application fee and the fee for grant are reduced for patent applications in character-coded format.

The application fee is reduced to 90.00 EUR if the European patent application is filed online in a character-coded format. Corresponding regulations are provided for the entry into the European phase based on an international application. If any of the required documents is not filed online in character-coded format the application fee is 120.00 EUR. For a filing of the application on paper the application fee is increased to 250.00 EUR.

The fee for grant is reduced to 835.00 EUR, if, starting from April 1, 2018, all changes and corrections of the application as well as the translation of the claims are filed online in character-coded format. In all other cases the fee for grant, including the publication fee, remains at 925.00 EUR. However, the Administrative Council has already decided to raise this fee to 1,025.00 EUR starting on April 1, 2019.

Additional reductions for the filing of documents online and in character-coded format are planned.

Coverage of Costs in Appeal Proceedings

Currently, the fees for appeal proceedings by far do not cover the costs for the EPO. Thus, on April 1, 2018, the appeal fee is increased to 2,255.00 EUR. The appeal fee remains unchanged at 1,880.00 EUR for small and medium enterprises (SMEs), natural persons or non-profit organizations, and institutions of higher education or public research institutions.

The association, founded in 2017 and spearheaded by a high-calibre board, focuses on the development of patent law practice in Germany, and analyses it analyses ist from various perspectives.

To this end, an English-language database will be constructed which publishes key patent law decisions of the Federal Supreme Court.

Also, a discussions platform is to be created for discussion of German patent law practice where this and decisions in other jurisdictions can be contrasted with the aim of opening up the jurisprudence of German courts to international discussion.

The association’s website can be found here.

Commenting on the online portal of the World Trademark Review, solicitor Dr. Florian Schwab explains two recent decisions of the Federal Supreme Court on the protection of 3D marks in the case of the square packaging used by Ritter Sport chocolate and Dextro Energy glucose.

The Federal Supreme Court reversed the restrictive approach applied by the Federal Patent Court and confirmed the liberal approach to patenting three-dimensional brands. Corresponding decisions with reasoning are still awaited. The Federal Supreme Court has up to now only released press statements.

Read the entire article here.

This article was published on 05.01.2018 in WTR Daily (component of World Trademark Review).