Multiple patentees have to pay separate appeal fees for joint appeal: Decision “Set of building bricks” by the German Federal Court of Justice (FCJ)

Official Headnotes:

a) If multiple patentees file an appeal against the decision of the German Patent and Trademark Office (GPTO) in opposition proceedings, each one has to pay an appeal fee (Law on Patent Fees No. 401 100). 

b) If for an appeal lodged by multiple participants only one appeal fee has been paid, it has to be examined whether the paid fee can be assigned to one appellant. 

In the decided case “Set of building bricks” an opposition was filed against the patentin suit which was jointly owned by two patentees. The opposition was successful and the patent was revoked by the patent department of the GPTO. The two patentees jointly filed an appeal against the revokation decision but paid only one fee. The Federal Patent Court dismissed the appeal as inadmissible on the ground that the one appeal fee paid cannot be assigned to one of the two joint appellants and therefore none has paid the necessary fees.

The joint patentees lodged a further appeal for legal review (“Rechtsbeschwerde”) with the FCJ and were successful. The FCJ confirmed the first instance decision that the two patentees had to pay two appeal fees for their joint appeal, but that in order to avoid hardship a single appeal fee is to be assigned to one of multiple appellants whenever possible. The was done by the FCJ based on the name of the first appellant on the money transfer form filed with the Federal Patent Court. Consequently the case was remitted back to the Federal Patent Court for decision on the merits.

This deision is important for all applicants before the GPTO because the FCJ made it clear that joint right holders (not only of patents, but also of utility models, trade marks and designs) have to pay separate fees for appeals and similar legal remedies explicitly enumerated in the Law on Patent Fees. The FCJ confirmed that the regulations in the Law on Patent Fees do not distinguish between right holders and opponents or other third parties. Under this reasoning seperate appeal fees for joint appeals therefore have to be paid not only in contradictory proceedings like oppositions but also in the most common appeal procedure, namely an appeal against the rejection of a patent application by the GPTO.

The ruling is in contradiction to hitherto common practice at the GPTO and the Federal Pastent Court requiring the payment of only one appeal fee for a joint appeal of multiple patentees. It is also contrary to the law and practice at the EPO and that in patent nullity proceedings.

Will the CRISPR patent dispute continue before the EPO ?

WO2013176772-Fig. 2

The revolutionary CRISPR-Cas9 gene editing method is presently the hottest issue in molecular biology. The scientists Jennifer Doudna of UC Berkely and Emmanuelle Charpentier of the Max-Planck Institute for Infection Biology in Berlin even are among the top contenders for the Nobel prize for Chemistry to be announced on Wednesdy, October 7. But there is also a dispute about who owns the IP related to this scientific breakthrough. A third scientist, namely Feng Zhang of the Broad Institute (jointly operated by the MIT and Harvard University) has built up a strong patent position and achieved the first patent grant for CRISPR technology in the US already in April 2014. The original patent application by Doudna and Charpentier (and from which the above illustration of the DNA editing is taken) is still pending (on October 5, 2015) before the USPTO and the EPO. In April 2015 the University of California has meawhile initiated interference proceedings before the USPTO to decide ownership of the technology.

A review of the EPO register now reveals that the agggressive patent stategy of the Broad Institute and Mr. Zhang was even more successful in Europe. By means of an ultra-fast prosecution procedure the grant of 4 patents was achieved between February 11 and September 2, 2015. Further applications are still pending. The patents were issued by the EPO even with knowledge of the original publications of Doudna and Charpentier, which predate the priority dates of the Zhang patents and have been submitted to the EPO files by anonymous third-party observations.

It is therefore not unlikely that a further main battleground of the IP dispute on who owns the CRISPR-Cas9 technology will soon be the EPO, where opposition proceedings against the 4 granted patents are likely and the legal rules for determining ownership on an invention differ from that in the US.

Let´s see how the Nobel committe will decide on Wednesday this week. It will then be interesting to observe if a Nobel prize for CRISPR-Cas9 in 2015 or one of the following years will influence the outcome of the legal dispute.

Patenting mathematical methods: Decision “Airplane attitude” by the German Federal Court of Justice (FCJ)

Official Headnotes:

a) Mathematical methods are patentable according to § 13 (3) No. 1 Patent Act only if they serve the solution of a concrete technical problem with technical means.

b) A mathematical method can be regarded as being non-technical only if it has in connection with the claimed teaching no relation to the purposeful utilization of forces of nature.

c) A sufficient relation to the purposeful utilization of forces of nature is present if a mathematical method is used for the purpose to obtain – based on the available measurement data – a more reliable knowledge about the attitude of an airplane and thereby to influence the functioning of the system for detection of this attitude.

d) Subject matter which is new and based on an inventive step cannot be regarded as not patentable solely on the ground that it does not provide a recognizable advantage compared to the prior art.

The invention: The patent application in question (DE 10 2007 002 672) relates to a method for the detection of the attitude of an airplane, namely its position, speed and orientation. For this purpose it was known to use a so-called Kalman filter which calculates based on a plurality of measurement data obtained by e.g. an inertial navigation system an estimation value of the physical quantities, e.g. the location and orientation of the plane. The processing speed of the Kalman filter depends on the amount of data to be processed such that real-time position determination was not possible with Kalman filtering based on the raw measurement data. From the closest prior art reference it was known to therefore feed the Kalman filter with averaged data instead of the raw data such as to reduce the processing burden and processing time of the filtering procedure.

It was therefore the technical problem of the invention to provide an alternative attitude determination method which allows a reliable and fast attitude detection of the plane.

According to the invention this problem is solved by a particular averaging preprocessing: The raw data, which are represented as points in a k-dimensional space of the measurement parameters, are replaced by the center point vector and the radius of a k-dimensional sphere having a minimal radius and including all measurement points. The difference between the method according to the invention and that of the closest pior art is therfore only the mathematical method of avaraging the raw data before feeding them to the Kalman filter, or expressed differently, the averaging algorithm.

Upon refusal of the application by the patent office, the applicant appealed to the Federal Patent Court. The 17th Senate – known for its rather critical stance toward software-implemented inventions – rejected the application on the ground that the distinguishing features would be based on non-technical considerations in the filed of data representation and statistics.

The decision: In its decision X ZB 1/15 of 30 June 2015 the FCJ reversed the lower instance decision and allowed the patent application. According to the ruling, an invention which distinguishes over the prior art only by its mathematical method is patentable if the mathematical method is new and non-obvious over the prior art and serves the solution of a concrete technical problem (determination of the state of an airplane based on measurement data) with technical means (sensors, data processing means). In this respect it is not necessary that the found mathematical solution of the technical problem has a technical advantage over the prior art. It is sufficient to provide an alternative mathematical solution as long as this is not rendered obvious by the prior art.

In short, an invention distinguished over the prior art by a new and non-obvious algorithm is patentable if the the algorithm is used for a concrete technical purpose, thereby relating to the use of forces of nature. 

It is thus quite clear that the FCJ would not have accepted the patent application in its original wording, related to a mathematical method for the determination of the state of a (not further defined) object. Only the restriction of the method to the attitude determination of an airplane provides the required concrete technical application. Would the application also be allowed if the claims were directed not to the attitude determination of a real airplane but one simulated on a computer ? My guess is yes, it would, as in accordance with the rationale expressed by headnote c) of the decision a more reliable knowledge about the attitude of an airplane and thereby influence on the functioning of the attitude detection system (thus the relation to the purposeful use of forces of nature) is obtained also by performing the method of the invention on a flight simulator.

Why patents are still needed: A response to the title story “Set innovation free!” published by the Economist on 8 August 2015

The Economist published in this week´s issue (8 August 2015;  a cover story consisting of an editorial and a more detailed article challenging the effectiveness of the patent system to achieve its purpose, namely to foster innovation. As reasons for this failure the newspaper cites the abuse of the system by so-called “patent trolls” threatening businesses with lawsuits based on dubious patents and the alleged skills of patent lawyers to obscure rather than to disclose to the public the inventions protected by the respective patents.

As empiric evidence in favour or against the effictiveness of patents is notoriously hard to come by, the Economist concludes: “But a top-to-bottom re-examination of whether patents and other forms of intellectual-property protection actually do their job, and even whether they deserve to exist, is long overdue.” In the meantime the Economist suggests to reduce patent lifetimes, in particular in fast-moving technical areas as computer technology, and to run experiments with other forms of financing innovation alongside the patent system. While the former would deprive of protection inventors being ahead of their time such that their inventions become commercially relevant only towards the end of a patent´s 20-year lifetime, the latter suggestion surely sounds like a good idea. Governments could increase funding for reasearch (e.g. into drugs against rare diseases, which are not profitable for pharmaceutical companies) and publish the results without filing a patent application, thus handing over the publicly financed innovation to the public domain. This, however, can be done without any change of the current patent system.

In the discussion of the pros and cons of patents, however, I always and in this article in particular miss one point, namely the capability of patents to transform innovation into a defined, tradable asset.

Patent attorneys do the work of dissecting innovation into defined, manageable pieces and the examiners at the patent offices do the work of verifying whether or not a claimed invention is really new and non-obvious. Without patents, innovation can come only in two forms, either being published and thus part of the public domain and no longer a tradable asset, or kept secret by the innovator. A transaction to sell such kept-secret innovation would be enormously complex as the work to define the parts of the innovation/new technology being subject to the transaction and the work to value it would have to be done from scratch by the transaction parties thermselves, and without the help of patent databases. The information asymmetry between the innovator and potential technology seller keeping the secret about the (allegedly) newly developed technology and the potential technology buyer having no such knowledge would complicate things further.

Without patents, innovation would thus be a largely illiquid asset. For the economy as a whole the costs of the illiquidity of new technology as an asset would in my view by far outweigh the costs associated with patent lawsuits, in which only a tiny proportion of all granted patents are involved. I had expected that in particular the Economist, an outspoken supporter of free trade, would have taken into account this vital role of the patent system.

Value of the matter of nullity proceedings against a SEP

Fig. 4PatentlyGerman Headnote: The value of the matter of a nullity lawsuit against a standard-essential patent (SEP) is not to be reduced if the patentee of the SEP commits not to seek injunctive relief based on the SEP.

Background: The patent in question (EP 1 005 726 B1) relates to a turbo-encoding method for mobile communication systems. It provides more efficient processing in case of variable data rates by transmitting the data via “super frames” having a variable size depending on a data rate of the input data.

The  patentee declared the patent essential to the 3G mobile telecommunications standard. In view of possible antitrust concerns of the European Commission the patentee committed in pending parallel infringement proceedings not to seek injunctive relief based on the patent in question against any third party.The patent was invalidated by the Federal Patent Court in first instance. In the appeal instance the nullity complaint was withdrawn. The Federal Court of Justice (FCJ) has set the value of the matter to EUR 30 m, the same amount as in the parallel infringement lawsuit. The patentee petitioned to lower this amount for the appeal instance to EUR 8.75 m on the ground that the value of the patent has meanwhile been decreased due to the waiver not to seek an injunction based on the patent.

The decision: The FCJ ruled in its decision X ZR 93/13 (28 October 2014) that the value of the matter of nullity proceedings against a patent essentially depends on the economic value which the patentee can derive from the patent. The economic benefit can be reeped from injunctions, damage claims against infringers, licensing or proprietary use of the patented teaching. In the court´s view the value of the patent does not depend on the particular type of use of the patent and therefore does not decrease when the patentee obligates itself not to seek injunctive relief based on the patent. As a result, the value of the matter was maintained at EUR 30 m, corresponding to the stipulation in the infringement lawsuit.