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Newsletter Our newsletters will keep you up to date on new regulations and laws,
as well as additional information on IP matters. The current topics are:
Due to significant changes to the fee structure for Community
trade mark applications the costs have fallen by around 40%. Essentially, the
official registration fees have been completely abolished accompanied by a
slight increase in the application fees. Author: Friederike Brauer
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"Act for Simplification and Modernisation of the German
Patent Law" passes the German Parliament On May 28, 2009,
the German Parliament passed the "Act for Simplification and Modernisation of
the German Patent Law" (Gesetz zur Vereinfachung und Modernisierung des
Patentrechts). The core aim of the new law is to streamline the patent invalidity
system in Germany. In Germany, the patent infringement courts are not concerned
with questions regarding the invalidity of the patent. Invalidation of German
patents (as well as of German parts of European Patents) falls under the
exclusive jurisdiction of the Federal Patent Court ("Bundespatentgericht"). Appeals against the decisions of the Bundespatentgericht are
handled by the Federal Supreme Court ("Bundesgerichtshof"). Under the new
provisions of the Act, fact-finding and the introduction of evidence is to be
concentrated to the largest possible extent in the first instance before the
Federal Patent Court. Appeals before the Supreme Court are now mainly limited to
the legal revision of the first instance decision. There are further regulations aiming at reducing the length of the
procedure, for example specific guidelines to the parties given by the court as
to which aspects of the case are considered to be of importance to its decision
in order to direct the parties to focus their submissions accordingly (qualified
guideline / "qualifizierter Hinweis"). The new Act will change and particularly shorten the patent
invalidity system in Germany considerably. Author: Wolfgang
Sandmann
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Recent and Future Developments in
EP Patent Practice As of April 1st, 2010, EPO introduces time limits for the filing of
divisional applications. This information is simplified and
must not be regarded as a statement or advice of law or
practice. 4| German Federal
Court of Justice, Decision of December 16th 2008: "Olanzapin"
In December 2008, the Federal Court of Justice (BGH) decided:
In the first instance, the Federal Patent Court had revoked the patent in
nullity proceedings, deciding that the subject-matter of the patent was not
novel because a generic formula which encompassed Olanzapin, the specific
claimed compound, had already appeared in an earlier publication. However, the
Federal Court of Justice corrected the decision and maintained the patent. This decision is of considerable significance for patent law in the field of
chemistry, and had been awaited with some anticipation, also on account of the
events leading up to the decision. Whilst the EPO Boards of Appeal regularly
deal with questions of this nature in the second instance, the German Federal
Court of Justice, as the final instance for German administrative and judicial
proceedings, only rarely has the opportunity to decide on such fundamental
matters. The Federal Court of Justice was at last able to deal with this matter
- whether the disclosure of a general chemical formula similarly entails the
disclosure of all individual compounds of this formula in a manner prejudicial
to novelty - in the "Fluoran" decision in 1988 (GRUR 1988, pp. 447-450). On that
occasion, the Federal Court of Justice had left it open in the head note as to
whether a previously disclosed formula always anticipated the chemical formulae
it covered, but in the discussion of facts on which the decision was based, the
court reached the conclusion that this was indeed the case. The "Fluoran" decision caused major difficulties for patent applicants in the
following years, as it is very common for a specific, innovative compound to
fall within the scope of an earlier, general disclosure. Until now this decision
made it difficult to meet the novelty criterion for a specific chemical
compound, even if it was not obvious in view of a previous unspecific generic
disclosure and exhibited notable advantageous properties. The "Fluoran" decision
therefore had the result that it was generally assumed in the literature, in the
German Patent Office and in the Federal Patent Court that a general chemical
formula was prejudicial to the novelty of all individual compounds which it
specifically encompassed. This was particularly problematic because precisely the opposite was
established in the case-law of the Boards of Appeal of the EPO, i.e. that a
generic formula actually does not disclose all the individual compounds with
this formula. For example, in the decision T181/82 it was decided that the
disclosure of "C1-C4 alkyl" did not entail the disclosure of a specific butyl
radical. The discrepancy between the case-law of the EPO and the Federal Court
of Justice could therefore lead to the absurd legal situation where the German
part of a European patent could be overturned in nullity proceedings in Germany
on the basis of lack of novelty. This problem is summarised, for example, in
"Auswahlerfindungen auf dem Gebiet der Chemie -Brauchen wir einen deutschen
Sonderweg?", B. Hansen, GRUR International 2008, pp. 891-899. The case was particularly interesting because in an unusual course of action,
the Duesseldorf Provincial Court of Appeal issued a temporary injunction against
a supposed infringer of the patent even though the Federal Patent Court had, at
this time, already passed the decision to revoke the patent based on lack of
novelty. The courts usually issue a temporary injunction due to patent
infringement only if there is no doubt as to the validity of the patent.
However, the Duesseldorf Appeal so convinced olanzapin was novel that court
disregarded contradictory decision Patent Court. The Federal Justice has
retrospectively affirmed judgement the Duesseldorf Provincial Court of Appeal.
The "Olanzapin" judgement of the Federal Court of Justice expressly confirms
that it shall not abide by the earlier "Fluoran" decision insofar as it has
different implications from the "Olanzapin" decision. The Federal Court of
Justice also expressly states that it views the decision as being in accord with
the case-law of the Boards of Appeal of the EPO. The conclusions made by the Federal Court of Justice in the "Fluoran"
decision on the disclosure of prior art documents are so general as to be of
significance even for practitioners in technical fields other than chemistry.
The "Olanzapin" decision is also of general interest for another reason. The
Federal Court of Justice also discusses the EPO's problem-solution approach for
the assessment of an inventive step in the grounds for the decision. The court
claims, almost heretically, that this approach, which is considered highly
objective by the EPO, would result in a retrospective point of view, which is to
be avoided. Specifically, the Federal Court of Justice does not consider it
appropriate to evaluate the inventive step starting from a single "closest prior
art" document. Rather, the state of the art as a whole should be taken into
consideration. This provides interesting possibilities for those in the field
when arguing in favour of (or against) an inventive step in German proceedings.
The decision (BGH X ZR 89/07) is published in GRUR 2009, pages 382 f. The contents of this Newsletter are intended to inform on recent
developments in national and international industrial property protection. We
have taken considerable care in the preparation of the contents, cannot however
assume responsibility for the correctness and completeness of the information
given. Should you have any questions on the topics dealt with in the Newsletter,
please contact us by email at the address given below.
Contact: Wolfgang Sandmann, Dr. Gregor Steglich or Friederike Brauer |
