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15-04-2021

15.04.2021 – Webinar

Quo vadis-CAI

dompatent is pleased to invite you to our second online seminar, in which we will discuss the current status of the investment agreement between China and the European Union, as well as possibilities for the protection of intellectual property in China.

dompatent will give a short insight into the CAI (EU- China Comprehensive Agreement on Investments) and the current status of the agreement. Furthermore, we would like to present the available protection possibilities for your innovations in China and point out the differences to intellectual property rights in Germany or Europe.

The speakers:

Dr. Eva Bock, LL.M. is a patent attorney and partner at dompatent. As a graduate chemist, she advises national and international clients on applications for technical property rights in Germany and abroad, including China.

Wanze Zhang, LL.M. is an attorney at law and partner at dompatent. As a lawyer, she advises national and international clients on trademark and design issues and provides advice prior to trade fair appearances.

Dr. Alexander Schuld is a patent attorney and partner at dompatent. As an aerospace engineer, he advises clients on the acquisition and defense of intellectual property rights in Germany and abroad, such as in China.

News

12-02-2021

Donations to social projects in the Cologne area

Last year, we decided to send the majority of our New Year’s cards by e-mail rather than by post. We were very happy to donate the savings resulting from the electronic card mailing to the two non-profit organizations Schumaneck GmbH and mittendrin e.V..

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22-01-2021

Partnership Dr. Alan Stewart and Dr. Alexander Schuld

dompatent von Kreisler is pleased to announce that Dr. Alan Stewart and Dr. Alexander Schuld have been appointed as new partners. To learn more about them and why they are an asset to our firm please click on the profiles.

News

01-01-2021

HOLIDAY WISHES 2020

dompatent von Kreisler wishes you a New Year filled with happiness, success and most importantly good health.

For many years, dompatent von Kreisler has supported local artists by purchasing a piece of art for our New Year’s wishes. This year we are pleased to share with you the untitled painting by Sabine Endres.

News

02-12-2020

Patentability of transgenic animals – summary by Dr. Annika Meyers

There has been a long discussion whether genetically modified animals should have access to patent protection or not. The European Patent Office has now ruled again on this topic in two cases T 682/16 and T 789/16. Read a summary by one of our IP trainees Dr. Annika Meyers on this topic in the journal „IP – Rechtsberater (IPRB)“.

News

09-11-2020

Those who succeed attract imitators

As patent attorneys and attorneys at law, we passionately protect and defend the rights of our clients, for example against product and trademark piracy. In 2018, EU customs seized almost 27 million infringing products worth €740 million at the EU’s external borders . The internet in particular enables dubious suppliers to sell plagiarism and counterfeits.

Raising public awareness of plagiarism and counterfeiting is one of the tasks of “Aktion Plagiarius e.V” . “Aktion Plagiarius e.V.” awards the negative prize “Plagiarius” for the most brazen plagiarism and forgeries, including a trophy, a black dwarf with a golden nose.

dompatent promotes Aktion Plagiarius as a supporting member. We would like to sustain our clients in this way as well, in order to draw attention to product and brand piracy and the associated disadvantages from an economic point of view but also with regard to safety deficiencies.

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19-05-2022

G1/22 and G2/22 Referral to the Enlarged Board of Appeal of the EPO– Jurisdiction and Validity of Priority

Lately there has been an increasing number of disputes before the European Patent Office regarding the priority right. To validly claim priority, it is crucial to focus not only on the claimed subject matter but also on the formal entitlement to claim priority. Two questions have recently been referred to the Enlarged Board of Appeal regarding the latter which could have a significant impact on how priority is accessed in Europe.


Summary

 

Art. 87(1) EPC provides inter alia that only the applicant of the previous application or his successor in title enjoy the entitlement to claim priority for an application being in respect of the same invention. Therefore, in the standing practice, the European Patent Office (EPO) requires that the applicant or his successor in title must be among the applicants of a later-filed European patent application. However, the situation becomes complicated when the owner of the priority right is among the applicants of an international PCT filing while not named as the applicant before the EPO.

In the consolidated hearing of two appeal cases T 1513/17 and T 2719/19, the technical Board of Appeal 3.3.04 of the EPO decided to refer the following questions to the Enlarged Board of Appeal (EBA) under Art. 112 (1) (a) EPC:

I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?

II. If question I is answered in the affirmative:

 Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC in the case where 

  1. a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States including regional European patent protection and 
  1. the PCT-application claims priority from an earlier patent that designates party A as the applicant and   
  1. the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?

The referred questions now being pended as G1/22 and G2/22 may be summarized as two general aspects regarding the priority right:

  1. Does the EPC provide the EPO jurisdiction power in determining whether a person claiming priority can be qualified as a “successor in title” within the meaning of Art. 87(1) (b) EPC?
  2. Can a so-called PCT joint-applicants approach be acknowledged, in particular for the Euro-PCT application? The PCT joint-applicants approach refers to the concept that when a PCT application is filed by joint-applicants including two or more parties and one of the applicants is the applicant or successor in title to the applicant of the previous application, the priority right owned by the party is implied to be shared with the other parities.

 

Matter of facts

 

In the first case T1513/17, the decision of an opposition division to revoke a European patent EP1755674B1 was appealed. Said patent was filed as a Euro-PCT application. As depicted in Figure 1, the patent at issue claimed priority of a US provisional patent application for which the inventors (R, W and Z) were named as applicants. Yet, in the subsequent PCT filing, the inventors (R, W and Z) were designated as applicants for the United States only while in all the other designated offices including European Patent Office, the applicants were designated as parties (A and U) other than the inventors.

 

The second case, T 2719/19, dealt with the appeal of the decision of an examining division to reject the European patent application EP 16160321. This application is the 2nd divisional application of EP’ 674 mentioned above and therefore has the same question of priority depicted in Figure 1– whether the applicants of the Euro-PCT application (A and U) are entitled to claim the priority right owned by R, W and Z, as well as whether the EPO has the jurisdiction power to make such an assessment.

 

 Jurisdiction of the EPO

 

In the referral questions formulated by the appellant and respondents, the jurisdiction power of the EPO to decide the entitlement of the priority was questioned.  Although the Board noticed that no convincing arguments had been presented, it decided to take this referral to the EBA as a convenient opportunity to have a settled decision.

Regarding the question of priority, the Board found that the EPO’s jurisdiction power had been questioned in several cases like T 239/16, T419/16 and T 845/19. In T 139/16 and T419/16, it was alleged that the power to decide the entitlement to the priority right shall be regarded in parallel to the power to determine whether a party is entitled to a particular patent application, which, according to the Travaux Préparatoires, the EPO does not have.

However, the Board preferred the position taken by T 844/18 stating that “there is no legal basis to relieve the EPO from the obligation to assess who has performed the act of filing the patent application as required by Article 87(1) EPC”. It is believed that, to avoid the possible disruptive effect a change may have, the bar to overturn the standing practise of the Boards of Appeal to decide on the priority rights in general, including the entitlement to the priority right should be very high.

 

 Joint-applicant approach

 

Assuming that the EPO has the power to assess the successor in title, the second question to be answered is that whether the priority was validly claimed in the relevant case.

To address this problem, the appellant alleged in the pending cases that the joint-applicant approach developed in the jurisprudence of the EPO can be applied analogously to the patent at issue since the Euro – PCT application had the effect of a regular national application under Art. 11 (3) PCT and Art. 153 (2) EPC. In the absence of any prevailing PCT provision, the EPC should be applied.

As described in A-III 6.1 of the Guidelines of Examination at the EPO,

in the case of joint applicants filing the later European patent applicant, it is sufficient if one of the applicants is the applicant or successor in title to the applicant of the previous application. There is no need for a special transfer of the priority right to the other applicants, since the later European application has been filed jointly

Further reference was made to Art. 118 EPC providing that

where the applicants for or proprietors of a European patent are not the same in respect of different designated Contracting States, they shall be regarded as joint-applicants or proprietors for the purposes of proceedings before the European Patent Office.”

The Board disagreed with the appellant and hold the opinion that the provision provided by Art. 118 EPC, even if it provides a legal basis for the joint-applicants approach, the effects are limited to the applicants of a European patent application. However, in the present cases the priority right owner R, W and Z are not among the applicants of the European patent at issue.

Hence, the question arises whether a PCT joint-applicants approach described above can be developed for this case and which legal system should be applied for the assessment.

 

Legal basis for PCT joint-applicants approach

 

The respondent I argued that the unitary character of the priority right in the PCT can provide the legal basis for this approach. The Board was not persuaded and believed that the validity of such approach should be assessed in the light of the Paris Convention, since the PCT does not create own rules regarding the effect of a priority claim but refers to Article 4 of the Paris Convention (Art. 8(2)(a) PCT).

To support the acknowledgement of the joint-applicant approach, the appellant submitted the judgement of the Court of Appeal (CoA) of The Hauge in the case Biogen/Genentech v. Celltrion. In this case, the CoA reasoned that the lex loci protectionis was applicable to the right priority because according to Art. 2(1) Paris Convention, the requirement for granting and nullification of patents in a particular country were determined in accordance with the national law and the right to priority was part of such requirement. For the Euro-PCT application, the applicable system should be the EPC.

The Board found this method appealing. However, the use of lex loci protectionis may introduce legal uncertainty into the assessment of PCT joint-applicants approach. For assessing the formal requirement for the transfer of priority right, the EPC itself does not contain any conflict of law-rules and this issue has not been addressed by the EBA. As a matter of fact, in several decisions of the Boards of Appeal, the formal requirement for the transfer of priority right by agreement have been assessed applying national law (II-d 2.2.2 Case Law of the Boards of Appeal at the EPO, 2019).

Yet, the Board further found that, in the absence of EPC provision regarding formal requirements for the transfer of priority right by agreement, it can be argued that the mutual filing of a PCT application by Party A and B constitute an implicit agreement transferring the priority right owned by party A to Party B when party B is named as the applicant for the EPC territory and Party A as the applicant for the US. In addition, this approach can be convinced when applying other national law systems requiring no formalities.

A similar line of thinking was also adopted in a judgement of the Bundesgerichtshof (German Federal Court of Justice – BGH X ZR 49/12). The court reasoned that the validity of the German part of a European patent that claimed priority of a national German patent should be assessed in light of the German conflict of law-rule. Since the German law did not require any particular formalities for the transfer, the fact of mutual filing led to the conclusion that there was an implied agreement between the parties. In a UK judgment “KCI licensing Inc and others v. Smith & Nephew PLC and others”, the court was also of the opinion that an implied agreement of transferring priority right could be inferred from the PCT application.

 

Consequently, considering the exploding number of international applications, the answer of the EBA will fill the gap and provide a jurisprudence for a great number of cases dealing with similar situation. We look forward to further legal clarification of the Enlarged Board of Appeal.

 

 

25-02-2022

New EPO Guidelines

[25.02.2022 – Thomas Henzler & Dr. Stephan Milles]

Most important updates:

Guidelines for Examination of the European Patent Office coming into force on 1 March 2022.

On 1 March 2022, the annually updated Guidelines for Examination of the European Patent Office will come into force. These Guidelines provide guidance on the practice of proceedings before the EPO under the European Patent Convention and its Implementing Regulations.

In the following article, the most important amendments to the updated Examination Guidelines are addressed, with a compact overview of the amendments in the respective Parts A-H.

Amendments Part A (Formal Examination)

Section A-III, 5.3 dealing with the designation of the inventor was updated.

If the applicant is not the (sole) inventor, the designation shall be filed in a separate document, containing the country and place of residence of the inventor and should preferably include the postal code. The updated now expressly states that the country and place of residence of the inventor can be that of the applicant.

Furthermore, in view of new Rule 19 EPC (in force since 01.04.2021), amended by deleting the procedure of communicating the designation to the inventor, the corresponding part of the Guidelines (previously section A-III 5.4) was canceled. Further, in section A-III, 6.12 it is stated that applicants from the People’s Republic of China and Sweden are exempted from filing a copy of search results under Rule 141(1).

Amendments Part B (the Search), Part C (Substantive Examination), Part D (Opposition and Limitation/Revocation)

Only minor changes have been made in Parts B-D, which need not be discussed further.

Amendments Part E (General Procedural Matters)

In section E-III, 8.3.1 the practice on checking the identity and authorizations of participants at oral proceedings held by videoconference was commented. For practice, especially the newly added part could be relevant, according to which copies of identity documents can also be filed via the EPO online filing options no later than two days prior to the oral proceedings or via email to the address provided to the parties at the beginning of the oral proceedings.

Further chapter E-VI was largely updated, dealing with the Examination by the EPO of its own motion; facts, evidence or grounds not submitted in due time and observations by third parties. Here, particularly broad additions were made in relation to section E-VI, 2.2 concerning the submission filed in preparation for or during oral proceedings. In more detail, section E-VI, 2.2.1 clarifies the topic of new facts and evidence. It states that Rule 116(1) EPC, being an implementation of Art. 114(2) EPC as a further development on the existing jurisprudence regarding facts or evidence not filed in due time, makes it clear that the examining or opposition division has a discretion to disregard new facts or evidence for the reason that they have been filed after the date indicated in the summons under Rule 116 EPC unless they have to be admitted because the subject of the proceedings has changed.

Also, the Amendments filed in preparation for or during oral proceedings are commented in section E-VI, 2.2.2 with respect to Rule 116(2) EPC, followed by clarifying the principles relating to the exercise of discretion (section 2.2.3),the Right to be heard (2.2.4) and the cost in section 2.2.5.

In addition to that the Scope of application of Rule 134 EPC (extension of periods) in section E-VIII, 1.6.2.3 was specified and now expressly cites: The period for entry into the European phase under Rule 159(1) EPC; the opposition period under Art. 99(1) EPC or the due date for the renewal fees for a divisional application and the beginning of the four-month period under Rule 51(3) EPC (see A-IV, 1.4.3), among others.

Amendments Part F (European Patent Application)

F-IV, 4.3 addresses inconsistencies between the description and the claims. Since the 2021 update of the Guidelines brought more demanding requirements for conforming the description to the claims prior patent granting, extensive user feedback was considered in the 2022 update. As a result, the requirements to adapt the description in accordance with the claims were loosened now. For example, it is no longer necessary to remove an embodiment in the description which is no longer covered by the amended claims. As an alternative, only subject-matter that is inconsistent with the claims needs to be deleted from the description. In addition to that, for borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant.

Moreover, it is described in section F-IV, 4.7.1 how to interpret terms such as “about”, “approximately” or “substantially”, in order to articulate a clear description that is consistent with the claims.

In section F-V, 3.2.4, a new example is given describing the lack of unity in claims with multiple dependencies.

In chapter F-VI, which is addresses the topic of priority, section F-VI, 1.5 was updated by integrating the teaching of G 1/15 about partial priorities. “Partial priority” refers to a situation in which only a part of the subject-matter encompassed by a generic “OR” claim is entitled to the priority date of a previous application (https://www.epo.org/law-practice/legal-texts/official-journal/2017/09/a82.html). The rationale of decision G 1/15 also applies in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Art. 87(1) EPC. Likewise, an example is given that applies the new case law and describes whether a document enjoys priority or not.

Amendments Part G (Patentability)

In section G-II, 3.3.2 the topic of claims directed to computer-implemented methods of simulating, designing and modelling was extensively updated since the decision G 1/19 plays a major role in view of the patentability of computer-implemented simulations (https://www.epo.org/law-practice/case-law-appeals/recent/g190001ex1.html).

Claims directed to methods of simulation, design or modelling typically comprise features which fall under the category of mathematical methods or of methods for performing mental acts. Hence, the claimed subject-matter as a whole may fall under the exclusions from patentability mentioned under Art. 52(2)(a)(c) and (3) EPC.

In the updated Guidelines, however, it is clarified that methods that are at least partially computer-implemented can lead to a claimed subject-matter which is as a whole not excluded from patentability anymore. The Guidelines here also go into more detail on the examples of simulations interacting with the external physical reality, purely numerical simulations, specific technical implementation of a numerical simulation and the intended technical use of the calculated numerical output data of a numerical simulation.

With respect to a design process, it is added that the specified principles apply equally if a computer-implemented simulation is claimed as part of a design process.

In Chapter G-VII dealing with the inventive step, section G-VII, 5.4 directed to problem-solution-approach was updated with respect to claims comprising technical and non-technical features.

It is legitimate to have a mix of technical and non-technical features appearing in a claim (mixed-type invention), as is often the case with computer-implemented inventions. In the new version of the Guidelines the application of the problem-solution approach to mixed-type inventions is outlined following the COMVIK approach.

Moreover, addressing the formulation of the objective technical problem for claims comprising technical and non-technical features, section G-VII, 5.4.1 provides practical advises to the users. Examples illustrating the application of the COMVIK approach in the field of artificial intelligence are given in section G-VII, 5.4.2.5.

Amendments Part H (Amendments and Corrections)

No significant changes were made to the updated version of the Guidelines.

Conclusion

In our opinion, the most relevant practical updates are:

  1. Computer-implemented simulation, designing or modelling are not inevitable excluded from patentability, G1/19, COMVIK – G-II, 3.3.2
  2. Description amendments are necessary (only) if the text is inconsistent with the claims – F-IV, 4.3
  3. Designation of the inventor may include the country and address of the applicant – A-III, 5.3
  4. Partial priority considerations and information, G1/15 – F-VI, 1.5
  5. Clarity of “about”, “approximately” or “substantially” – F-IV, 4.7.1
  6. Lack of unity example for claims with multiple dependencies – F-V, 3.2.4
  7. Extension of periods examples, Rule 134 EPC (automatic extension) – E-VIII, 1.6.2.3
10-09-2021

Reminder to refile EU trademarks in the UK

30 Sept. is the deadline to refile your EUTM in the UK!

Though Brexit is no longer the hotest topic, it may still be improtant to know that the deadline of 30 September 2021 for EU trademark applications pending on 31 December 2020 to be refiled in the UK is approaching. Time are limited for the intellectual property holders who have EU trademark applications pending on 31 December 2020 but have not yet refiled corresponding UK applications to maintain the same filing date in the UK.

So just go for it!

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26-07-2021

Flood events – dompatent supports the city of Erftstadt

We are deeply shocked and saddened by the recent floods and the resulting destruction and losses. We would like to express our deepest sympathy to all those affected and wish them strength and courage.

Furthermore, we feel connected to our region and committed to the community. Therefore, last week we made a financial donation to the city of Erftstadt, which was particularly hard hit by the severe weather events. This means that help for those affected can begin immediately, even before the aid from the state and the federal government.

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