26 April 2018 – Unified Patent Court: implications of UK ratification for the UPC

26 April 2018 – Unified Patent Court: implications of UK ratification for the UPC

On April 26, 2018, the United Kingdom has deposited the instruments of ratification of the Agreement relating to the Unified Patent Court (UPCA).

The Preparatory Committee of the UPC has confidently declared that this year has begun well, although there remains more work to do before the provisional application phase can commence – not least the outcome of the complaint against the UPCA pending in the German Federal Constitutional Court which will influence the speed of moving to the final stage of the project. See Committee full communication.

Actually, the announcement from the UK Intellectual Property Office and the statement delivered by the Minister for Intellectual Property, Sam Gyimah MP make clear that such ratification triggers another significant issue of the Brexit negotiations, rather than being a positively decisive event for the UPC. Namely, the UKIPO has pointed out that “the unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU” (see full announcement). The Minister for IP has stated that “now we are well placed to make sure we turn the changes – which will be the central part of our exit – into opportunities. One of those opportunities is to make sure we continue to strengthen and develop the international IP framework” (see full statement).

In this regard, even the controversially optimistic opinion on consequences of Brexit for the UPC, given in September 2016 by Richard Gordon and Tom Pascoe (from Brick Court Chambers), pointed out that the UK would be required to accept the supremacy of EU law in its entirety as regards all patent disputes as fall within the jurisdiction of the UPC, and that this may be politically significant.

In fact, Art. 20 UPCA establishes that the Court shall apply Union law in its entirety and shall respect its primacy (see also Arts. 21 and 24 UPCA).

Even the UPCA will need to be amended as to (only apparently) formal provisions. For instance, Art. 1 UPCA establishes that “the UPC shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States”, but Art. 2 UPCS establishes that “‘Member State’ means a Member State of the European Union” and “‘Contracting Member State’ means a Member State party to this Agreement”. Another noteworthy amendment is required to Art. 7 UPCA, currently establishing that one section of the UPC will be in London.

Therefore, it appears that a Diplomatic Conference would be needed to introduce the possibility for the UK, after having left the EU, to be party to the UPCA.

Provided that the Court of Justice of the EU will not issue any decision against this possibility.

In the end, the ratification by the UK makes the start of the UPC provisional application phase closer, but it does not render the UK participation to the UPC more certain.

Unless the rising voices against leaving (e.g., see among others: Confederation of British Industry, 1, 2, 3; European Movement; Open Britain) will succeed in reversing Brexit.

Andrea Scilletta

01 April 2018 – Euro-PCT applications – Search Fees for supplementary European search

01 April 2018 - Euro-PCT applications – Search Fees for supplementary European search

According to a decision of the Administrative Council of 13 December 2017, from April 1, 2018, the search fee for the supplementary European search for Euro-PCT applications where the international search report was drawn up by the United States Patent and Trademark Office, the Japanese Patent Office, the Korean Intellectual Property Office, the Chinese Intellectual Property Office, the Federal Service for Intellectual Property (Russian Federation) or the Australian Patent Office is no more reduced. The supplementary European search amounts to € 1.300,00.

See full decision

22 March 2018 – an advertising slogan is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question – Judgement of the Court of Justice of the EU (General Court), case T 235/17

22 March 2018 – an advertising slogan is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question – Judgement of the Court of Justice of the EU (General Court), case T 235/17

The applicant had filed an application for registration of an EU trade mark for the word sign MOBILE LIVING MADE EASY for goods and services in Classes 5 to 7, 9, 11, 12, 19 to 22 and 37 of the Nice Agreement. The EUIPO examiner rejected the application on the ground that it was devoid of any distinctive character. The applicant filed a notice of appeal with EUIPO and the Board of Appeal of EUIPO dismissed the appeal holding that the sign was devoid of any distinctive character, because the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message which serves to highlight positive aspects of the goods and services concerned, namely that they make it easy to have a mobile, travelling life, and not as an indication of their commercial origin.

The General Court held that, in order to determine whether the goods and services covered by an application to register an EU trade mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories or groups, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration is caught by one of the absolute grounds for refusal. By recalling the Case Law of the Court of Justice of the EU, the General Court further held that the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant to the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services.

Also, it must be examined whether or not, in the light of the meaning of the word element of the mark applied for, the goods and services covered by the mark at issue constitute a homogenous group justifying recourse to general reasoning.

The General Court still recalled the Case Law of the Court of Justice of the EU stating that, despite their differences, all the goods and services at issue could have a common characteristic, relevant to the analysis that the Board of Appeal had to carry out, which could justify their placement within a single homogenous group and the use by the Board of Appeal of general reasoning in relation to them.

In the present case, the General Court held that it is apparent from the contested decision that the Board of Appeal found that the goods and services referred to in the application for registration belonged to a homogenous category in the light of a common characteristic defined by reference to the meaning of the sign applied for, namely ‘which facilitates mobile life’. In that regard, ‘[a]lthough the goods in the various classes have very different specific characteristics, they form[ed] one homogenous category concerning a general, but essential or desirable, feature for those who are moving around in e.g. their vehicles by land or water, namely, one way or another, the goods facilitate[d] mobile life (by providing means for the specific purposes of personal hygiene, safety, security, energy, cooking, preserving food and drink, thermal comfort or comfort in general)’.

The General Court acknowledged that the Board of Appeal thus took into account that the application to register covered goods and services with different characteristics. However, it took the view that those goods and services also had a general characteristic in common of facilitating mobile life.

Moreover, the General Court stated that the Board of Appeal pointed out that the services in Class 37 referred to in the application for registration related to recreational vehicles, motorhomes, caravans, yachts and boats, passenger vehicles, vans and trucks that could serve as permanent or temporary accommodation for professional or leisure purposes and that the goods in question could be installed or used in those vehicles. Consequently, goods which are installed or used in such vehicles must be considered to be goods which facilitate mobile life in one way or another.

Thus, the General Court held that the Board of Appeal was right in finding that the goods and services in question form a homogenous category, in that they facilitate mobile life in one way or another.

By recalling the Case Law of the Court of Justice of the EU, the General Court stated that registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. However, a mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question and accordingly enables the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from those which have a different commercial origin.For a finding of no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question.

Hence, the General Court shared the view of the Board of Appeal that the sign did not contain any unusual variation of the English rules of syntax and grammar and that advertising slogans, such as that in the present case, were often written in a simplified form, so as to make them more concise and snappier. The mark applied for, taken as a whole in relation to the goods and services in question, sent a clear and unequivocal message, which was immediately apparent and did not require any interpretative effort on the part of the relevant English-speaking public. Thus, the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message, the function of which was to communicate an inspirational message of quality and that it would not perceive in the sign applied for any particular indication of commercial origin beyond the promotional information conveyed, which merely served to highlight positive aspects of the goods and services in question, namely that they made it easy to have a mobile, travelling life. In that regard, the relevant public is the English-speaking public, and the meaning of the sign applied for does not depart from everyday language in such a way that the relevant public will recognise in it more that the mere juxtaposition of the expressions ‘mobile living’ and ‘made easy’, and the relevant public will understand that sign as meaning ‘which facilitates mobile life’. That meaning is so obvious that that public does not need to think in order immediately to understand it.

Thus, the General Court shared the view of the Board of Appeal that the sign applied for will not therefore be perceived by the relevant public as an indication of the origin of the goods and services in question, but as an advertising slogan. Furthermore, the sign applied for does not include any unusual element capable of conferring distinctive character on that sign.

Therefore, the General Court confirmed the decision of the Board of Appeal holding that that sign does not include any elements that might, beyond its promotional meaning, enable the relevant public to memorise it easily and instantly as a trade mark for the goods and services in question.

Full judgement

13 March 2018 – EU figurative mark including a juxtaposition of two English words compared with an earlier EU word mark – Judgement of the Court of Justice of the EU (General Court), case T 346/17

13 March 2018 – EU figurative mark including a juxtaposition of two English words compared with an earlier EU word mark – Judgement of the Court of Justice of the EU (General Court), case T 346/17

The judgement relates to an action against a decision of the Board of Appeal of EUIPO relating to opposition proceedings concerning an application for registration of an EU trade mark sought for a figurative sign the dominant element of which is the result of a juxtaposition of two English words (‘guidego’), where the opposition was grounded on an earlier similar EU word mark (‘GUIDIGO’) for services held in part identical and in part similar.

First of all, recalling the case law of the Court of Justice of the EU, the General Court stated that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark.

In this regard, the General Court acknowledged that the dominant element of the sign requested is the result of a juxtaposition of two English words and that the use of different colours makes it possible to perceive them.

However, with reference to the conceptual comparison of the signs, the General Court stated that the fact that consumers distinguish between the two words which make up the element ‘guidego’ does not mean that they will necessarily be able to understand them.

As regards the visual comparison, still recalling the case law of the Court of Justice of the EU, the General Court pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression.

In the present case, the General Court held that the sign comprising the earlier mark and the dominant element of the mark applied for are similar to the extent that they coincide in six out of seven letters and differ only in the central vowel. Similarly, the degree of stylisation of the word element and the additional elements of the mark applied for do not counteract the similarities between the signs, as a result of which they are similar to an average degree.

That degree of similarity exists regardless of whether the element ‘guidego’ is perceived as two separate words or as a single element.

Also, the General Court held that there is a high degree of phonetic similarity in so far as the pronunciation of the elements ‘guidigo’ and ‘guidego’ is very similar.

Although the sign applied for included additional words written in much smaller typeface, recalling the case law of the Court of Justice of the EU, the General Court stated that they will probably not be spoken, and that it is also necessary to take into account the natural tendency of consumers to shorten long signs.

Moreover, the General Court held that, although the sign GUIDIGO is a fanciful term, whereas the element ‘guidego’ is a juxtaposition of two English words, nevertheless that fact is not sufficient to make it possible to consider that the difference in pronunciation of the two distinctive elements would be significant, at least as regards the non-English-speaking section of the relevant public.

In fact, even if the element ‘guidego’ is pronounced according to the rules of English pronunciation, whereas the GUIDIGO sign is pronounced according to the rules of pronunciation of the mother tongue of the consumer other than English, that possible difference is relevant only in respect of the part of the relevant public whose mother tongue is not English, but who does speak English.

Thus, even if all members of the general public of the European Union recognised the element ‘guidego’ as the juxtaposition of two English words, the General Court held that it cannot be argued that the whole of that public will pronounce that element according to the rules of English pronunciation.

In addition, recalling the case law of the Court of Justice of the EU, the General Court stated that it should be borne in mind that, as regards the phonetic comparison of the signs, it is necessary to disregard their meaning, as those considerations are relevant to the conceptual comparison.

Full judgement

13 March 2018 – EU figurative mark based on a letter of the alphabet – Judgement of the Court of Justice of the EU (General Court), case T 824/16

13 March 2018 – EU figurative mark based on a letter of the alphabet – Judgement of the Court of Justice of the EU (General Court), case T 824/16

The judgement relates to an action against a decision of the Board of Appeal of EUIPO relating to opposition proceedings concerning an international registration designating the European Union obtained for a figurative sign based on the letter “k”, where the opposition was grounded on four earlier national trade marks (registered with the Benelux Office for Intellectual Property) also based on the letter “k” for identical services.

With regard to the phonetic similarity, the General Court held that, since the relevant public may be led to recognise a letter ‘k’ in the mark applied for and in the earlier national trade mark, those two marks are likely to be pronounced in the same way. Consequently, it must be held that, contrary to what the Board of Appeal pointed out in that regard, the marks at issue are phonetically identical.

With regard to the conceptual similarity of two marks which consist of the same single letter, recalling the case law of the Court of Justice of the EU, the General Court stated that the graphic representation of a letter is likely to evoke a very distinct entity in the mind of the relevant public, namely a particular phoneme. In that sense, a letter refers to a concept.

It follows that there may be conceptual identity between signs where those signs refer to the same letter of the alphabet.

With regard to the global assessment of the likelihood of confusion, still recalling the case law of the Court of Justice of the EU, the General Court stated that it is true that the level of attention of the relevant public is an element which has to be taken into consideration in assessing whether there is a likelihood of confusion. However, it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion and therefore any possibility of applying that provision can, a priori, be ruled out.

The fact that the public in question will pay more attention to the identity of the producer or provider of the goods or services which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the members of the relevant public only rarely have the chance to compare the various marks directly and must therefore rely on their imperfect recollection of them.

The distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. However, even if the degree of inherent distinctive character of an earlier mark were lower than average, such a weak distinctive character would not, in itself, preclude a finding that there is a likelihood of confusion.

In any event, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services covered.

Full judgement

13 March 2018 – EPO Case Law – case T 0018/18 – Decisions of the EPO must be reasoned: it is not sufficient to only refer to the arguments put forward by a party to the proceedings

13 March 2018 – EPO Case Law – case T 0018/18 – Decisions of the EPO must be reasoned: it is not sufficient to only refer to the arguments put forward by a party to the proceedings

According to Rule 111(2) EPC decisions of the European Patent Office which are open to appeal shall be reasoned. The Board of Appeal pointed out that the purpose of this requirement is to enable the party or parties and, if an appeal is filed, the Board of Appeal to examine whether a decision taken by a department of first instance was justified or not. It is the established case law of the Boards of Appeal that, in order for a decision to be reasoned, it must contain, in logical sequence, those arguments which justify the decision. The conclusion drawn from the facts and evidence must be made clear. Therefore, all the facts, evidence and arguments which are essential to the decision must be discussed in detail.

The appeal concerned an opposition decision stating thatthe opposition division agrees with the analysis of the opponent. Claims 1 and 10 of the main request thus introduce subject-matter which extends beyond the content of the application as filed. Hence, the main request as a whole is not allowable”.

The Board of Appeal disputed such statement, holding that it remained entirely obscure why the opposition division reached these conclusions and, in particular, for what reason the opposition division could not follow the arguments of the appellant-proprietor. A reasoning for its conclusion, in the form of a logical sequence of arguments, taking into account the facts, evidence and arguments essential for reaching it, dealing especially also with those of the party negatively affected by this conclusion, here the appellant-proprietor, have not been given.

Similarly, the opposition decision stated the conclusion of the opposition division with the sentence: “The opposition division could not follow the arguments of the opponent and agreed on the other hand with the arguments put forward by the proprietor”.

Again, the Board of Appeal pointed out that such statement did not constitute adequate reasoning.

Also, the Board held that the failure to provide adequate reasoning in the decision in accordance with Rule 111(2) EPC amounted to a substantial procedural violation.

see full decision

13 March 2018 – EPO Case Law – case T 2328/13 – Selecting which steps are to be executed on different components of a mobile network is not just related to business policy decision

13 March 2018 – EPO Case Law – case T 2328/13 – Selecting which steps are to be executed on different components of a mobile network is not just related to business policy decision

The decision of the Board of Appeal concerns a patent, claim 1 of which recites: a method executed within a base station for registering a wireless terminal with a home agent, comprising:

  • receiving … identifying indicia associated with a subscriber from the wireless terminal when the wireless terminal requests access to a network;
  • providing the identifying indicia to an authentication server;
  • receiving, at said base station, a profile associated with the subscriber, wherein there are a plurality of home agents to which registration information from the wireless terminal could be routed, wherein the plurality of home agents are associated with different mobile virtual network operators, wherein the profile identifies a plurality of home agents that are assigned to a mobile virtual network operator associated with the subscriber in a list, and wherein the profile is received from the authentication server; and
  • routing registration information from said wireless terminal to an identified home agent, wherein routing registration information comprises receiving a registration request at the base station, resolving at the base station which home agent to utilize during registration by selecting one of the identified plurality of home agents in the profile, and transmitting the registration request from the base station to the selected home agent.

The examining division had commented that “the question of whether the network operator accepts to have an entity outside his own network … is a business policy decision as this is not imposed by technical limitations”.

On the contrary, the board held that moving the selection of the home agent to the base station is not just related to a business policy decision, since in a mobile network there will clearly be technical consequences, for example concerned with hand-over from one base station to another which will impact on the various tunneling connections required.

see full decision

10 March 2018 – Taking into account by the Board of Appeal of EUIPO of new evidence concerning genuine use of an earlier mark – Judgment of 28 February 2018 of the Court of Justice (First Chamber) of the EU, case C 418/16 P

10 March 2018 – Taking into account by the Board of Appeal of EUIPO of new evidence concerning genuine use of an earlier mark – Judgment of 28 February 2018 of the Court of Justice (First Chamber) of the EU, case C 418/16 P

The appeal originated from the following dispute.

The appellant filed two applications for EU trade marks with EUIPO concerning a word mark and a figurative mark, seeking registration in respect of goods and services in classes 9, 16, 35, 38 and 42 of the Nice Agreement. The figurative and word marks were registered.

Afterwards, the intervener at first instance filed two applications for a declaration of invalidity of the word mark and the figurative mark, based on an earlier national mark registered for services in classes 35 and 42 of the Nice Agreement (the earlier national mark was registered also for services in class 39).

Before the Cancellation Division of EUIPO, the appellant requested that the intervener at first instance provide proof of use of the earlier national mark in question. The Cancellation Division rejected the applications for a declaration of invalidity on the ground that that evidence was not adduced.

Seised of appeals brought by the intervener at first instance against those decisions, the Board of Appeal of EUIPO, after taking into account a series of additional elements of evidence produced for the first time in the appeal, found, in each of the contested decisions, that the intervener at first instance had proved genuine use of the earlier national mark for part of the services in Class 35 of the Nice Agreement. Accordingly, it annulled the decisions of the Cancellation Division and, since the latter did not examine the likelihood of confusion, it decided to refer the cases to that Division for examination of the applications for a declaration of invalidity.

 

The appellant brought two actions for annulment of the contested decisions. After having ordered the joinder of the two cases, the General Court, by the appealed judgment, dismissed those actions in their entirety.

In particular, the appellant submitted that, by holding that the Board of Appeal was entitled to take account of evidence of genuine use of the earlier national mark at issue produced for the first time before it, the General Court infringed the provisions of the Regulation 207/2009 (similar provisions are established also by Regulation 2017/1001 on the European Union trade mark, currently in force).

 

In the judgement of 28 February 2018, the Court of Justice (First Chamber) of the EU first recalled, consistently with its case law, that the Court is not bound either by the Advocate General’s Opinion or by the reasoning on which it is based. Consequently, a party’s disagreement with the Opinion of the Advocate General, irrespective of the questions that he examines in his Opinion, cannot in itself constitute grounds justifying the reopening of the oral part of the procedure. Thus, the Court held that, having heard the Advocate General, it had all the elements necessary to rule in the case and that those elements have been debated before it.

 

Then, the Court pointed out that, under Article 76(2) of Regulation 207/2009 (corresponding to Article 95(2) of Regulation 2017/1001 currently in force), EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

In accordance with the settled case-law of the Court, it follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject and EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time.

By stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account.

 

As regards the appeal procedure, the Court has recalled that it has already held that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal is not only to invite the parties, as often as necessary, to file, within time limits which it sets, observations on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of facts or evidence. In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO.

Thus, consistently with its case law, the Court recalled that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division.

However, it cannot be inferred therefrom, a contrario, that during the examination of an appeal against a decision of a Cancellation Division, the Board of Appeal does not have such discretion. Accordingly, the Court held that the General Court did not err in law in finding that the Board of Appeal is entitled, when examining an appeal directed against a decision of a Cancellation Division, to take into account additional evidence of genuine use of the earlier mark concerned not produced within the time limits set by that division.

In this regard, consistently with its case law, the Court also recalled that, in the context of invalidity proceedings, taking facts or evidence into account which have been produced out of time is particularly likely to be justified where EUIPO considers, firstly, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the application for a declaration of invalidity brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account.

Full judgement

1 March 2018 – Validation of European patents in Cambodia (KH) with effect from 1 March 2018

1 March 2018 – Validation of European patents in Cambodia (KH) with effect from 1 March 2018

 

The President of the EPO and the Cambodian Minister of Industry and Handcraft signed an agreement on the validation of European patents in Cambodia.

The validation agreement entered into force on 1 March 2018. From that date it is possible to validate European patent applications and patents in Cambodia, where, after validation, they will confer essentially the same protection as patents granted by the EPO for the now 38 member states of the European Patent Organisation.

 

However, under the Law on Patents currently in force in Cambodia, pharmaceutical products are excluded from patent protection. In fact, Cambodia currently benefits from the WTO waiver allowing Least Developed Countries to avoid granting and enforcing IP rights on pharmaceutical products until 1 January 2033. This waiver will also apply to European patents providing protection for pharmaceutical products for which validation is sought in Cambodia.

In this case, applicants can only benefit under Article 70.8 TRIPS of a so-called “mailbox system” for national patent applications for pharmaceutical products. According to this “mailbox system”, Cambodian legislation authorises the filing of national patent applications for pharmaceutical products, despite the fact that they are excluded from patent protection. These national applications will not be examined as to their patentability until the end of the WTO waiver period. Following that period, protection may be granted for the remainder of the patent term, computed from the filing date of the application.

 

Validation in Cambodia is deemed requested for any European or international application filed on or after 1 March 2018. It is not available for applications filed prior to that date, or for any European patents resulting from such applications.

The validation fee is EUR 180. It must be paid to the EPO within six months of the date on which the European Patent Bulletin mentions the publication of the European search report, or, where applicable, within the period for performing the acts required for an international application’s entry into the European regional phase.

After expiry of the relevant basic time limit, the validation fee can still be validly paid within a two-month grace period, provided that within that period a surcharge of 50% is also paid. If the designation fee has not been paid and further processing is available, the validation fee can still be paid along with the further processing fee concerning the designation fee. If the validation fee is not paid in due time, the request for validation is deemed withdrawn.

A validation fee which has been validly paid is never refunded, including the case where a validation fee has been paid for an application falling within the purview of the exception for pharmaceutical products.

see EPO Communication

5 September 2017 – EPO Case Law – case T 1201/14 – Transfer of right of priority: critical issues, comments and suggestions as to the safest procedure

5 September 2017 – EPO Case Law – case T 1201/14 - Transfer of right of priority: critical issues, comments and suggestions as to the safest procedure

The right of priority is created in a country, where a first application is filed, and can be potentially exploited in one or more other countries, by filing possible subsequent applications claiming priority of the first application.

When the right of priority is to be transferred a number of critical issues arise: when, how and under which law.

In recent case T 1201/14, the board of appeal concerned has issued an interesting decision illustrating the current approach used by the EPO.

The opposed European patent was granted for European patent application D2 that was filed after the publication date of novelty-destroying document A4 (i.e. August 2006).

Application P, from which European patent application D2 claimed priority, was filed on 28 July 2006, before the publication date of document A4. Application P was filed by the inventor. A first transfer of the right of priority from the inventor to Company 1 was validly performed. The appellant-Company 2 was only in a position to enjoy the right of priority from application P if it was the successor in title of Company 1 in respect of P at the filing date of European patent application D2.

Hence, the formal validity of the priority claim of the opposed patent hinged on the question whether the second transfer of the right of priority derived from application P from the then applicant Company 1 to the appellant-Company 2 was validly performed. That is, whether the appellant-Company 2 validly enjoyed the right of priority arising from application P under the EPC.

The board stated that the EPC contains provisions (i.e. Articles 87 to 89 in conjunction with Rules 52 to 54) which form a complete, self-contained code of rules of law on the subject of claiming priority for the purpose of filing a European patent application. The right of priority is defined in almost identical terms in Article 4A(1) of the Paris Convention.

In the board’s view, for a transfer of the right of priority from “any person” to a “successor in title” within the meaning of EPC to be considered valid, the transfer has to have been concluded before the filing date of the later European application claiming that priority. This is because the term “successor in title” in that provision refers to the person who has already filed (“has duly filed”) the first application but not yet the later European patent application (“for the purpose of filing”). The board held that this in turn directly implies that the succession in title must have already taken place when the later European patent application is filed.

Also, the board stated that the “right of priority” derived from a given first application is in itself a substantive property right, which is to be distinguished from the property right to the first application. As such the right of claiming priority from a first application may be transferred independently of the right to the first application up until the filing of the later European application claiming priority from it (at which time it becomes an accessory right to the underlying first application).

Hence, the substantive requirements derivable from the EPC for a valid transfer of the right of priority may be summarised as follows:

The successor in title with respect to the right to claim priority from a first application must prove that it indeed owned,

(i) before the filing of the later European application,

(ii) the right of priority relating to the first application for the purpose of filing the later European application claiming that priority.

The board further stated that, in general, an agreement on the transfer of the right of priority is concluded by means of a contract between the transferor (the original owner of the right of priority) and the transferee (the owner’s successor in title). This requires two corresponding declarations of the contracting parties, whether express or implied, regarding the subject-matter of the transfer. Thus, an implicit transfer of a particular right may be accepted when it is sufficiently clear that the parties formed an agreement and what they agreed.

As the EPC contains neither guidance as to the formal requirements for a valid transfer of the ownership of the right of priority nor conflict-of-laws provisions for that purpose, national law is commonly relied upon by the departments of the EPO entrusted with the procedure. In principle, the following national laws come into question in this context:

(a) the law of the country where the first application was filed (“lex originis”);

(b) the law of the country where the later application was filed (“lex loci protectionis”);

(c) the law of the country which is agreed upon in the relevant contract (“lex loci contractus”);

(d) the law of the country where at least one of the parties to the transfer has its residence (“lex domicilii”).

The board was aware that so far there is no established jurisprudence of the Boards of Appeal as regards the national law generally applicable to the question of the transfer of the right of priority. The formal requirements of different national laws for the transfer of intellectual property rights range from none at all (as e.g. under German law) to strict formal rules (as e.g. under US law).

In conclusion, where the applicants of the first application and the later European application are not identical, it has to be proven that the right of priority derived from the first application and claimed for the later European application was indeed transferred, before the filing date of the later European application, by the applicant of the first application to its successor in title, in accordance with specific formal requirements.

The appellant-Company 2 submitted a number of lines of arguments.

First, the appellant-Company 2 relied on the lex originis, i.e. US law, and submitted exhibit E5 as evidence that the transfer of the right of priority derived from US provisional application P had been concluded after the filing on 27 July 2007 of European patent application D2 but that the parties had defined the effective date of the transfer as 24 July 2007 by way of a so-called nunc pro tunc assignment (i.e. a contract concerning the transfer of a right, which contract is concluded later in time than the contractually stipulated effective date of the transfer).

In the board’s judgment, however, even if a retroactive transfer such as the nunc pro tunc assignment under US law invoked by the appellant-Company 2 was allowable under US law, it would not be acceptable under EPC provisions, because any natural or legal person can only then be considered a “successor in title” for the right of priority within the meaning of EPC provisions if it obtained that right from its previous owner by a transfer agreement concluded before the filing of the later European patent application, as also confirmed by the established jurisprudence of the Boards of Appeal and several decisions of national courts of the EPC Contracting states.

Given that the right of priority confers on its owner a benefit of an exceptional kind, it is of the utmost importance for third parties to have certainty as early as possible so as to be able to determine the patent application’s effective filing date and the relevant prior art, with its crucial effect on patentability. To allow a retroactive assignment of the right of priority would put individual parties in a position to change, at will and for the past, the effective date at which a substantive right arises. This, however, would not be in the public’s interest.

Even if US law somehow allows for a retroactive transfer, the board emphasised that this does not necessarily mean that the same is true for the EPC provisions: a provision of national law which is contrary to the EPC cannot be acknowledged by the EPO.

Also, the appellant-Company 2 submitted a second line of arguments based on an implicit transfer by virtue of a general policy under German law.

The appellant-Company 2 submitted that a general policy had been established between Company 1 and Company 2 and had been followed by both parties. By executing this policy the right of priority for the patent in suit was transferred to the appellant-Company 2. As means of evidence the appellant-Company 2 filed a number of affidavits (the content of which was contested by the respondent) signed by chairmen of Companies 1 and 2, a general counsel and a patent engineer of Company 1 almost five years after the filing date of European patent application D2, as well as a number of exhibits relating to emails and communications sent by Taiwanese and US representatives of Company 1 to employees of the same Company 1 and emails and communications sent by Taiwanese representative of Company 1 and the European representative of the appellant-Company 2 to employees of Companies 1 and 2.

As regards the applicable rules for assessing the evidence adduced, the board concluded the following: the burden of proving a valid transfer of the right of priority lies with the patent proprietor (appellant-Company 2) since it is the one claiming that right. This rule is all the more applicable taking into account that the patent proprietor (appellant-Company 2) alone has access to the relevant evidence when it asserts a concluded transfer of rights. Given that the appellant-Company 2 submitted no other – in particular no contemporaneous documentary – evidence, the board accepted the later-executed affidavits filed as admissible means of evidence. As to the standard of proof to be applied, the board held that the circumstances of the case required a proof “beyond reasonable doubt” (rather than a proof based on “balance of probabilities”). This is because practically all the evidence regarding the general policy lies within the knowledge and power of only one party to these inter-partes proceedings, i.e. the patent proprietor (appellant-Company 2) here, whereas the other party (respondent) was not in a position to present any counter-evidence.

As regards this second line of argument, the appellant-Company 2 relied on the lex loci protectionis, here the law of Germany as one of the Contracting States to the EPC. The board first accepted that German law allows for an implicit transfer of the right of priority, and that thus no transfer in writing is necessary. Yet, even assuming that German law was the applicable national law as regards the formal requirements for the transfer of the right of priority, and that thus no transfer in writing was necessary, the board nonetheless held that the appellant-Company 2 has not proven beyond reasonable doubt that it was the valid successor in title under the EPC.

In fact, the board was not convinced that the general policy covered the transfer of the right of priority for applications, as application P, which were already pending at the date when the general policy entered into force.

Also, the board was not convinced that the filing policy had always been complied with, since it was apparent to the board that it was not necessarily followed by the employees of both Companies 1 and 2 in every case.

Moreover, the board held that it was not clear whether the transfer from Company 1 to the appellant-Company 2 of the right to apply for a patent based on those applications did in fact include the transfer of the right to claim priority from them. Given that the right to apply for a patent based on an application and the right to claim priority from that application are independent and thus separable rights, the mere transfer of a pending application from one party to another does not necessarily mean that the associated right of priority is transferred between those parties too.

In particular, the board found that the mere fact that patent attorneys receive instructions from companies to file patent applications does not automatically demonstrate that the right to claim priority from a first application was already validly transferred between the parties before the filing date of the later application. Similarly, the mere ticking of the box in EPO Filing Form for the purpose of a declaration of priority with respect to application P at the same time as (rather than before) the filing of application D2 does not in itself constitute proof of a valid transfer of the right of priority. Rather, the filing of the declaration of priority in respect of a European patent application is an entirely formal requirement with the aim to duly informing the EPO and the public that priority had been claimed for the purpose of prosecuting the application in terms of search and examination. This, however, may not provide any guarantee regarding the validity of the claimed priority.

Moreover, the appellant-Company 2 submitted a third line of arguments based on a “direct transfer” of the rights associated with a US non-provisional application D1 from the inventor to the appellant-Company 2 on 27 July 2007 under US law, as evidenced by two inventor’s transfer declarations.

The board held that the mere fact that those rights (“entire right, title, and interest”) relating to a subsequently and independently filed application such as D1, which claimed priority from application P, were “directly” transferred to the appellant-Company 2 cannot establish that this necessarily included, for the European patent application D2, the transfer of the right to claim priority from application P.

Finally, the appellant-Company 2 submitted a fourth line of arguments based on an implicit transfer by virtue of a general policy under Taiwanese law.

In particular, the appellant-Company 2 submitted this fourth line of argument, along with related exhibits, for the very first time in its response to the respondent’s letter of reply, i.e. long after filing its statement setting out the grounds of appeal.

The board recalled that the Rules of Procedure of the Boards of Appeal establishes that a board’s discretion in admitting any amendment to a party’s case (including late-filed arguments) “shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”. The board pointed out that, taken as a whole, the Rules of Procedure of the Boards of Appeal make it clear that the parties’ complete case must be submitted at the outset to ensure fair proceedings for all concerned and to enable the board to start working on the case on the basis of both parties’ complete submissions. Hence, the board held that this new line of argument could and should have been presented with the statement setting out the grounds of appeal, given that the applicability of Taiwanese law was already discussed in the opposition proceedings.

As to the substance and prima facie relevance of this fourth line of argument, the appellant-Company 2 relied on the lex domicilii, i.e. Taiwanese law in this case.

The board held that, even if Taiwanese law were to be accepted as the law governing the assessment of the general policy and the formal requirements for a valid transfer of the right of priority, the outcome of such an assessment would not be different from that of the appellant’s second line of argument, as a result of a lack of substantiation regarding the content of the underlying evidence. This is because (a) the general policy failed to cover the transfer of the right of priority for application P or (b) the general policy was not always complied with. Moreover, (c) the general policy did not indicate the transfer of the right of priority for “pending applications” such as application P. As to observation (c), the board held that even assuming that the right of priority and the right to file a later patent application claiming that priority were indeed inseparable rights under Taiwanese law, this could not override the substantive requirement according to which the right of priority relating to a first application can be transferred independently of the right to that first application. Hence, the board found that the fact that a certain patent application (such as application P) has been transferred on the basis of the alleged general policy does not necessarily mean – in the absence of any express or implied indication – that this transfer includes the right of priority derived from that application.

Consequently, the board decided not to admit the fourth line of argument.

In conclusion, the board judged that – irrespective of the issue of the applicable national law with regard to the present transfer of the right of priority – the appellant-Company 2 was not able to sufficiently establish that the right of priority arising from application P was validly transferred to the appellant-Company 2 before the filing of European patent application D2. Thus, the priority claim for European patent application D2 was invalid, and A4 belongs to the prior art thereof causing the related European patent to be revoked due to lack of novelty.

The author of this article deems that the law applicable to the transfer of the right of priority is not the one of the country where priority is then claimed, because the right is constituted by the filing of the first application and must be transferred before being exercised, i.e. before the filing of the subsequent applications claiming the priority of the first application, and the transferor and transferee generally have no relationship with the country where priority will be claimed. In addition, it would be impractical to sign a priority right transfer agreement for each country where the transferee will have the right to exercise the priority right that meets both formal and substantive requirements of each single country concerned.

Given the lack of relationship of the right of priority with a specific territory, it is our view that the law applicable to the validity of a transfer of the right of priority can be identified in the same way as provided for by the EU Regulation Regulation 593/2008 of 17 June 2008 (Rome I) concerning the law applicable to contractual obligations. In other words, the transfer of the right of priority should be governed by the law chosen by the parties or, in the absence of choice, by the law of the country of residence of the applicant for the first application, i.e. the transferor of the right of priority.

However, in view of the lack of certainty about the law applicable to a transfer of the right of priority, some practical guidance is necessary.

The author of this article deems that the safest procedure is to transfer the right of priority through a written agreement expressly mentioning the right of claiming priority of the first application (and possibly the countries for which it is transferred), signed by the transferor(s) and the transferee(s) before the filing date of any subsequent application claiming priority from the first application, and expressly indicating the law applicable to the transfer agreement.

Andrea Scilletta, IP attorney – see Full decision