Posts by: Volker 'Falk' Metzler

In this earlier posting we discussed the compatibility of the Unified Patent Court Agreement (UPCA)  with the Acquis Communautaire of the European Union. One of those aspects was an adaption of the Brussels I Regulation (Ref 1215/2012), which ensures recognition and enforcement of national court judgements in other EU member states (see also here and here). Article 89(1) UPCA requires that an adapted Brussels I Regulation entered into force before the UPCA can itself enter into force.

Thus, the task is to implement the Unified Patent Court as a court common to a subset of EU member states and subject to the same obligations under EU law as any other national court. A similar situation applies to the Benelux Court of Justice. As this court up to now only provided preliminary rulings on interpretation of the national law of Belgium, The Netherlands and Luxembourg, it is now receiving new jurisdictional competences from the national courts of those three countries, thus giving cause to an adaptation of the Brussels I Regulation as well.   

As the Brussels I Regulation up to now only relates to EU-wide recognition of civil and commercial judgements of  national courts, it is apparent that a mechanism is required to ensure recognition of UPC judgements among the EU member states.   

Now the EU Commission has issued a proposal for an amendment (COM(2013) 554 final) to clarify how the jurisdictional rules of Brussels I will work in the context of the UPCA and should be applied in relations between EU and UPC Member States (see press release).

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Reades of this blog may have noticed that we try to cover the discussion about representation rights of European Patent Attorneys before the new Unified Patent Court. Our recent postings related to this issue may be found here, here, and here.

According to Art. 48 (1) UPCA, all national lawyers of the UPC member states are entitled to represent cases before the UPC, regardless of their knowledge and experience in patent law and practise. Art 48 (2) UPCA grants such individual representation rights also to European Patent Attorneys according to Art 134 EPC, if they have an “appropriate qualification such as a European Patent Litigation Certificate“.

Now a proposal of the Institute of Representatives before the European Patent Office (epi) came to our attention (download) in which criteria for the required “appropriate qualification” and a structure of the European Patent Litigation Certificate are proposed to the UPC Preparatory Committee which is in charge of definig this issue.

Appropriate Qualification: The paper states that an appropriate qualification of a European Patent Attorney (EPA) should include

abilities [...] going beyond the European Qualification Examination [...]. They should, in particular, reflect the necessary and desirable skills and knowledge for representation before the UPC.

A source of such abilities is seen in the

extensive experience acquired as patent attorney in their respective EPC member state, going beyond representation before the Patent Office.

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The patent US 7,346,545, relating to delivering copyrighted media products through a server free of charge in exchange for watching advertisements, has been enforced by Ultramercial against a number of Internet media competitors, like HuluWildTangent and YouTube. In August 2010 the 545 patent has been found invalid by a California District Court in view of the Bilski v. Kappos ruling which has been issued shortly before by the US Supreme Court (CV 09-06918). For further information on this case, please see my earlier posting here.

To be on the safe side, the District Court applied a two-stage approach, that is, as a screening filter, the CAFC’s machine-or-transformation test and then the SCOTUS abstract idea test.

The MOT test failed as the District Court found that the “mere act of storing media on computer memory does not tie the invention to a machine in any meaningful way”. Further, the Court identified “using advertisement as a currency” as the core principle of the patent, while the claims do not cite any concrete features as to how the core principle can be implemented.  

Some observers criticised the District Court’s reasoning as being capable to kill any invention where a key concept can be labelled ‘abstract’ even if the invention is clearly limited to an electronic implementation and even if the electronic implementation is central to the idea.

Now, as the Federal Circuit under Chief Judge Radar reviewed the case in appeal, it turns out that such criticism hit the mark (see decision of June 21, 2013), as the case was reversed and remanded. In its decision the Federal Circuit referred multiple times to the term “technology”, e.g.:

  • The plain language of the [patent act] provides that any new, non-obvious, and fully disclosed technical advance is eligible for protection.
  • After all, unlike the Copyright Act which divides ideas from expression, the Patent Act covers and protects any new and useful technical advance, including applied ideas.
  • Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor.

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In this ealier posting on the America Invents Act we reported on the new Covered Business Methods Review (faqinfo) which allows to challenge any business method patent before the Patent Trial and Appeal Board (PTAB) as soon as it is enforced against an accused infringer.

From a European perspective, this new proceedings seems particularly interesting as the question as to whether or not a claim falls under the CBM review is answered by 37 CFR § 42.301 as follows:

(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

This definition is surprisingly similar to what European case law (and German case law) has developed to define “methods for [...] doing business [...] and programs for computers as such” according to Art. 52 (2), (3) EPC (and § 1 (3), (4) PatG). Even further, the requirement of a “technological feature that is novel and unobvious” seems to correspond to the well-established Comvik approach (cf. T 641/00, 2002) of the EPO Boards of Appeal, according to which non-technical features cannot contribute to novelty and inventive step.

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Yesterday, the much awaited website of the UPC Preparatory Committee went live under the domain A main purpose of this website is to inform the public about the Committee’s work and the UPC as such (see e.g. Q&A section). One of the most important tasks of the Committee is the preparation of the Rules of Procedure of the future Unified Patent Court.

After an inofficial 15th Draft has been leaked early June, the official 15th draft of the Rules of Procedure has been published yesterday and opened for

public consultation until 1 October 2013.  

Written comments are to be submitted to So, please, colleagues, readers, and fellow bloggers, study the official draft and make submissions to the Preparatory Committee if necessary.

The further procedure after closure of the public consultation is explained as well:

[...] the Committee shall after closure of the written phase of the public consultation ask the Drafting Committee to evaluate the contributions received and to make proposals and comments ensuing from the public consultation. Further, the Committee intends to organise a public hearing on the draft rules of procedure in early 2014.  The European Commission shall be asked to advise on the compatibility of the Rules of Procedure with European Union law.  This will form the basis for the Committee’s Legal Framework Working Group to prepare the draft Rules of Procedure for approval by the Committee. As with all of the Committee’s preparatory work, also the Rules of Procedure will need  to be adopted by the UPC’s Administrative Committee once it has been established.

The official version of the 15th draft differs form the inofficial version in a number of ways. One significant difference relates to Rule 286 governing, inter alia, the conditions under which non-lawyers (i.e. professionals that are not attorneys-at-law) may independently represent cases before the UPC. This rule has previously been criticised on this blog because of its striking lack of clarity (see here for the inofficial 15th draft version and here for the 14th draft version), as the 14th draft contained the unclear term “jurist” and the inofficial 15th draft contained an even more unclear recursive definition of the term “lawyer”. 

Clarified Rule 286 (1) of the 15th draft RoP now reads as follows, with the crucial sentence highlighted:

A representative pursuant to Article 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Contracting Member State. Lawyers within the meaning of Article 48(1) of the Agreement are also persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State. They shall lodge a certificate evidencing such authorisation. In subsequent actions the representative may refer to the certificate previously lodged.

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One of our most successful presentations on business trips to Asia in recent years was the one about “Dos and Don’ts in European Filings” covering many practical hints that should be observed – possibly already at the drafting stage – upon filing direct EP applications with the EPO or entering the EP regional phase via the PCT route.

At KSNH we are very happy to announce that an article by my colleagues Jochen Höhfeld and Shino Tanaka summarising this lecture has been recently accepted for publication by major IP journals in Japan, China, and Korea:


JPAA Journal “Patent”, Vol.66, No.4, 2013.3, pp. 14-19


China IP News, 2013-05-31, issue 1427, p. 8 (part 1)

China IP News, 2013-06-07, issue 1429, p. 8 (part 2)


KPAA Association Journal, May 20, 2013, pages 6, 7

(see also here, No. 162  제810호, 2013.05.20)


Basically, the articles cover the following topics:

Claim Drafting

  • Limitation of number of claims
  • One independent claim per category
  • Unity of the invention
  • Reference numnerals
  • Multiple independent claims
  • Functional claim features
  • Clarity of the claim language
  • Claims in two-part-form (Jepson-type claims)
  • Claim amendments
Drafting the specification:
  • Number of pages
  • Basis for claim amendments
  • Discussion of prior art
  • Abstract
  • Incorporation by reference

Organisational issues:

  • Format of pages
  • Entering the regional phase before the EPO (Euro-PCT)
  • Regional pahse entry with the EPO acting as International Search Authority
  • Designation of the inventor
  • Divisional applications before the EPO
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In this earlier posting on the transitional scheme and opt-out options we explained that the future European patent system will provide two different routes for patent protection, (i.) the classical EP bundle patent  and (ii.) the new European Patent with unitary effect but, in the long run, only one judicial system namely the Unified Patent Court as established by the Unified Patent Court Agreement (UPCA).

During an at least seven-years long transitional period, however, proprietors/applicants of EP patents/applications can opt-out from the UPC system and ensure responsibility of the present European post-grant system with infringement and invalidity suits before national courts separately for each single nationalised EP patent, this circumventing the unitary effect of UPC proceedings (Art 83 UPCA).

We also pointed to the fact that there is a certain risk for EP patent proprietors to get stuck with the new UPC system and its unitary effect if, e.g, an invalidity suit is filed by a competitor before the proprietor can file an opt-out request for his patent(s).

Before this background, the recently published 15th Draft of the Code of Procedure (mark up version) provides a new Rule 5 (8) RoP implementing a sunrise period giving EP proprietors/applicants the option to opt-out before the UPC Agreement actually enters into force, thus preventing third parties to file legal suits by which a patent gets stuck with the UPC system:

An Application to opt out may be lodged with the European Patent Office after a date to be announced by the European Patent Office and before the coming into effect of the Agreement. [...]

At the time being, the length of the sunrise period is unknown.

Also new in comparison to the 14th draft of the Rules of Procedure are Rules 5 (3) and (6) RoP requiring fees for opt-out and withdrawal of opt-out (cf. also Rule 370 (2) RoP). The amount to be payed is not yet known, however, there are speculations that it will lie in the range of 200 to 400 EUR, which may sum up to a considerable amount of money if large portfolios are involved.

In this earlier posting we speculated about the representation rights of national German and UK patent attorneys before the new Unified Patent Court, based on the wording of  Art 48 UPCA and the somewhat odd formulation of Rule 286 of the 14th Draft of the Rules of Procedure:

[...] Lawyers within the meaning of Article 48(1) of the Agreement are also jurists authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation. [...].

We preliminarily concluded that the definition of the term “jurists” may extend the group of lawyers according to Art. 48 (1) UPCA by certain other legal professionals with a specific expertise, such as national patent attorneys that are allowed to represent their clients in national civil proceedings, e.g. German patent attorneys who are authorised  to present invalidity cases before the German Federal Patent Court (BPatG) and the Federal Court of Justice (BGH).

Now the 15th Draft of the Code of Procedure (mark up version) has found the daylight – not on an official server of the Preparation Committee, but in a somewhat obscure way via the private US-based  mailchimp service.

Besides other interesting amendments in comparison to the the 14th draft (see e.g. here), Rule 286 CoP has been amended by replacing the term “jurist” by the term “lawyer”. The new passage thus reads:

Lawyers within the meaning of Article 48(1) of the Agreement are also lawyers authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation.

What is the sense of this – mathematically speaking - recursive definition?

Article 48 (1) UPCA generally covers “lawyers authorised to practise before a court of a Contracting Member State”, i.e. all attorneys-at-law of the Contracting member states. We thus have two definitions, whereas the second defines is a genuine subset of the first:

  1. lawyers authorised to practise before a court of a Contracting Member State, and
  2. lawyers authorised to practice in patent related matters before a court in a Contracting Member State.

What is the sense in clarifying that a genuine subset of the group of entitled lawyers is entitled as well?

The most probable answer is that this recursive – and thus unclear – definition is nothing more than a drafting error caused by a quick-and-dirty approach to end speculations like the above ones about representation rights of some national patent attorneys. In the present form, Rule 286 (1) 15th Draft CoP might then just be useless and needs to be cancelled in the 16th draft.

On the other hand, one may also argue that the existence of Rule 286 (1) changes (downgrades) the scope of the term “lawyer” in Art 48 (1) UPCA to “person practicing law” or simply “legal counsel”, which would immediately render the two definitions meaningful again, as they would read

  1. legal counsels [generally] authorised to practise before a court of a Contracting Member State, and
  2. lawyers authorised to practice [only] in patent related matters before a court in a Contracting Member State.

The first definition would then cover attorneys-at-law and the second, again, such national patent attorneys that are authorised to represent certain patent cases before national civil courts. In this case, however, the amendmet would be useless as well as it does not change anything as compared to the 14th draft version.

Regardless of the way Rule 286 (1) may be interpreted in the present form or amended in future, it certainly is not an indication of the utmost care the Preparation Committee should pay to the Rules of Procedure as the backbone of the new court system.

(photo public domain via Wikimedia)

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In February this year the European trademark community took note of a leaked version of the European Commissions’s draft trademark legislation in reaction to the widely discussed Study on the Overall Functioning of the European Trademark System presented by the Max Planck Institute for Intellectual Property in February 2011 (pdf, 4.5 MB).

The so called ‘leaked proposal’, which immediately received a considerable press coverage (see e.g. WTR or MIP), basically consists of two draft regulations and one draft directive:

  • draft amended Council Regulation No 207/2009 on the CommuniyEuropean Trade Mark,
  • draft amended Regulation (EC) No 2868/95 on the fees payable to the OHIM,
  • proposal for a Directive to approximate the laws of the Member States relating to trademarks (Recast).

The leaked proposal is a pre-final text which gives extensive insight into the EU Commission’s plans to substantively refurbish the Community Trademark (CTM) system as we know it today.

The reasons why and by whom the legislative proposal was ‘leaked’ instead of being officially published on the EU servers lie in the dark, but it can be assumed that the political intentions outweigh the legal ones. As the drafts have been sent, inter alia, to the member organisations of the so called OAMI Users’ Group, a consortium of international NGO’s active in the IP sector and accredited to the OHIM, the leaker apparently intends to provoke a reaction of stakeholders, for instance to test the acceptance of the new legislation in a more conspirative way instead of risking open and public criticism. 

The MARQUES association considers itself as a defender of trademark owner’s and system user’s interests. Compared to other member organisations of the OAMI Users’ Group, MARQUES appears to be more interested in a public discussion as it now again involved the public in a discussion that many other stakeholders consider a topic for closed expert circles only. The extensive comments (pdf, also here) published yesterday (20 March 2013) also include a detailled summary of the substance of the draft legislation.

By this open approach MARQUES refuses to become a silent accomplice of the leaker and his political interests and, even more important, reminds lawmakers that openness and public consultation are vital to a democratic community and the acceptance of its laws.

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The new European patent system will provide two concurrent routes to patent protection on the continent, (i.) the classical EP bundle patent, “which does not benefit from unitary effect by virtue of EU Reg No 1257/2012” and thus has to be validated in each EPC member state where protection is sought and (ii.) the European Patent with unitary effect effective in all ‘contracting member states’ that have signed and ratified the Unified Patent Court Agreement (UPCA) at the time of grant.

While Unitary Patents are mandatorily subject to proceedings and lawsuits before the Unified Patent Court (Art 3 (a) UPCA), this is not the case for classical EP patents (cf. Art 3 (c), (d) UPCA). For EP patents and applications pending at the date of entry into force of the Agreement, Article 83 UPCA defines a rather liberal transitional scheme allowing EP patent proprietors and applicants to make use of the present European post-grant patent system for many years to come. This transitional scheme consists of two basic elements, a transitional period and an opt-out mechanism.

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