BGH “Kabelwickelband” / “Cable wrapping tape” (X ZR 1/23 (BPatG))

“May literature that cannot be found in standard patent databases be late filed?”

With the decision “cable wrapping tape”, the German Federal Court of Justice (“BGH”) rejected an appeal filed by a German appellant. Before, said appellant filed a nullity complaint at the German Federal Patent Court (“BPatG”) with the intention to revoke the German part of a European patent pertaining to a thin (<0.5 mm) and abrasion-resistant cable tape with specific material characteristics, to be used particularly in the engine compartment of a motorized vehicle.

Key Legal Points

▪ In the appeal, a new technical document was introduced, namely a technical specialist textbook (“Fung and Hard, Textiles in automotive engineering, Cambridge/England, 2001”) that had not been presented in the first instance, i.e. before the German Federal Patent Court.

▪ The German Federal Court of Justice ruled that said book represents “new grounds of attack” and is thus inadmissible, as the plaintiff/appellant should have introduced it after receiving the first instance courts initial guidance (i.e. the qualified opinion pursuant section 83(1) of the German Patent Act.

▪ In this regard, it shall be no excuse that …

a) the new grounds of attack were filed after all other grounds of attack – even when these were filed after receipt of said qualified opinion (§ 83 (1) PatG) – were dismissed, or that …

b) the literature (i.e. the technical specialist textbook) was not found in standard patent databases, i.e., particularly hard to discover

Guiding Principles of BGH “Kabelwickelband” / “Cable wrapping tape” (X ZR 1/23 (BPatG)

a) “If the patent court has stated in the qualified opinion issued pursuant to Section 83 (1) PatG that the previous pleadings could prove to be insufficient, it is up to the plaintiff to submit new means of attack in the first instance, if necessary. The fact that the patent court also considers these means of attack to be insufficient is not sufficient to justify the admission of further means of attack on appeal (confirmation of BGH, judgment of August 8, 2013 - X ZR 36/12, GRUR 2013, 1174 para. 33- Mixer attachment)”.

b) “This also applies with regard to documents that are not included in the databases commonly used for patent searches.”

Conclusion and Takeaway

a) BGH emphasizes thorough preparation and early presentation of all relevant arguments

b) Ignoring 1st instance courts guidance makes it difficult (!) to submit new evidence on appeal

c) Even less accessible sources must be searched and filed in due time in the 1st instance

 

New office in Dresden

“There lies a city, bold and fair – Dresden, breathing art and air …”

The German city of Dresden is often called “Elbflorenz” (Florence on the river Elbe) because of its stunning Baroque and Rococo architecture and its status as one of the cultural centers of Europe. However, Dresden is not only a cultural and historical jewel but it’s also an economic powerhouse, representing e.g. the heart of “Silicon Saxony”, Europe’s largest microelectronics and IT cluster and the fifth largest in the world. Over 2.300 companies in the region are involved in semiconductors, nanotechnology, and IT.

A logical next step forming part of a successful growth strategy… For quiet some time, GULDE & PARTNER had an eye on Dresden as a potential location for a new office. The proximity to key clients and industry clusters always had an appeal to the Partners of our firm. Consequently, our new office located near the city center of Dresden positions our law firm closer to clients in the semiconductor, microelectronics, and software industry, as well as world-leading research institutes. This enables more personal, faster, and localized services for the innovative businesses of a city that has seen significant growth in patent filings, fueled by innovations not only from the ‘big players’ settled there, but also from local start-ups, research institutes, and SMEs.

Moreover, as Dresden is home to worldclass universities and research institutes, it offers access to highly educated and trained professionals in science, engineering, as well as in law. This aids both, recruiting top talent for our firm and better understanding the needs of our local tech-oriented clients. Two of such talents – Dr. Martin Kidszun and Dr. Sascha Trommler – both qualified as German and European Patent Attorney and well-versed in these roles form part of the launch team of our Dresden office, which is also further bolstered by three paralegals. The office will be locally managed by very experienced Dr. Martin Kidszun and remotely led by Berlin Partners Falk Lehmann and Nicolas Haße.

 

G 1/24 – A guidance on claim interpretation

“The description and drawings shall always be consulted to interpret the claims …”

Recently, the much-awaited decision on case G 1/24 has been issued by the Enlarged Board of Appeal (EBA) providing guidance on claim interpretation when assessing patentability of an invention. The EBA represents the highest judicial authority within the European Patent Office (EPO) ensuring uniform application of the European Patent Convention (EPC).

Diverging approaches in claim interpretation before the EPO

Regarding the interpretation of claims, essentially two different approaches have emerged in EPO case law. According to the first approach, the whole patent application document is used as its own dictionary. In this way, the description can provide definitions for claim features deviating from their common meaning. The second approach describes the so-called “primacy of the claims”, according to which the description is only considered if a claim feature is unclear or ambiguous.

Facts of the underlying appeal case T 0439/22

The appeal case leading to the decision G 1/24 is T 0439/22. The case is concerned with the question of how a claim feature should be interpreted when assessing patentability. The referring Board found that if the claim feature was given its common meaning in the art, the subjectmatter of the claim would be novel. However, if the same feature was understood in a broader ‒ but still technically meaningful ‒ manner in view of a definition given in the description, the subject-matter of the claim would lack novelty (see T 0439/22, point 1.4 of the reasons).

Core aspects of the decision on case G 1/24

In its decision, the EBA held that the claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation. Thus, the EBA explicitly rejected the approach to consider the description and drawings only in case of unclarity or ambiguity of the claims.

Alignment of EPO practice with national courts and UPC

The decision on case G 1/24 aims to align EPO practice closely with that of the national courts of EPC member states and the Unified Patent Court (UPC). This intention becomes particularly evident in point 16 of the reasons for the decision in which it states that “the Enlarged Board finds it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents. On this point, the Enlarged Board agrees with the harmonization philosophy behind the EPO”.

 

Trademark and Design Department Reloaded

Expansion of Gulde’s trademark and design practice under new head

Gulde & Partner continues to grow: Recently, Lucas Günther took over as head of the trademark and design law practice @ GULDE. The firm's soft IP practice has thus gained an experienced litigation expert as well as increased its strategic importance.

For 35 years, Gulde has not only been dealing with patents and utility models, but also with trademarks and designs with the help of its experts. At the beginning of this year, Lucas Günther, an experienced lawyer specialized in all areas of soft IP, took over as head of the trademark and design department at Gulde. Lucas Günther studied law at the University of Bayreuth, with his main focus in intellectual property and competition law. He also completed additional training in economics with a focus on management and competition. He completed his legal clerkship at the Berlin Court of Appeal and was admitted to the bar in 2018. Lucas Günther worked for a major international law firm in the field of intellectual property law until 2024.

His practice focuses on trademark and design law as well as on unfair competition law and he represents clients in these areas, in particular in and out of court in disputes and in official proceedings. In addition, he advises on advertising concepts and campaigns as well as on intellectual property contracts. The aim of the restructure is to further consolidate and expand the existing prosecution practice and, in addition, to support clients with additional expertise in the area of soft IP litigation. The department continues to be staffed by the long-standing Gulde experts Jörg Grzam and Albrecht Rhotert. With this step, Gulde & Partner is sharpening its profile of supporting its clients in all matters of intellectual property law with even more competence and experience.

 

Claim Interpretation at the UPC

An overview of UPC decisions on the interpretation of claims

In several decisions, the UPC has provided insights on it’s stance on the interpretation of claims. This concerns both, material questions regarding a patent’s scope of protection as well as procedural questions related to the UPC’s possibly non-bifurcated infringement and revocation actions. A selection of key decisions is shortly reflected.

UPC CoA Paris, UPC_CoA_335/2023 10xGenomics v NanoString

Also at the UPC, the wording of the claim shall be the decisive basis for the scope of protection. As clarified in this decision by the UPC’s Court of Appeal, an individual feature of the claim cannot be interpreted in isolation, but must be interpreted in light of the claim as a whole. In addition, taking the description and the drawings into account when interpreting a patent is a mandatory step in proceedings at the UPC. By doing so, possible claim interpretations shall be excluded which conflict with the description and the drawings. While a claim shall be interpreted from the perspective of the skilled person, if a term used in the patent differs from a skilled person’s general usage of said term, at the UPC the meaning of the terms as evident from the patent specification shall prevail. In this decision, the UPC CoA further emphasized that these principles of claim interpretation apply equally to the question of infringement and the question of validity. This reflects the UPC’s option to organize proceedings on a “non-bifurcated” basis. It is indeed difficult to imagine combined infringement and revocation proceedings arriving at different claim interpretations.

Specific interpretational issues: Means-plus-function CII claim features

At the EPO (e.g., according to the EPO Guidelines F-IV, 4.13.2): A feature of the ‘means-plus-function’ type is interpreted in the case of a computer-implemented invention (CII) as a means specifically designed to carry out the relevant steps/functions, rather than means merely suitable for doing so. So far, the UPC’s Court of Appeal has left the question unanswered on how to interpret such CII means-plus-function features, which are regularly relevant in litigation actions pertaining to user device, telecommunication, or the like. However, some Local Divisions have already started to discuss this matter. According to the LD Mannheim and Düsseldorf, specifications of purpose in a patent claim shall indirectly define the subject matter protected by the patent in that it must not only fulfil the spatial and physical features, but must also be designed in such a way that it can be used for the purpose specified in the claim. This is still a less narrow interpretation than that of the EPO, indicating that the UPC may allow for broad interpretation of CII MPF features even in cases where such features have led to the grant of a EP patent over the closest prior art.

Specific interpretational issues: “at least one of A, B and / or C”

In decision UPC CFI 52/2023, the Local Division Munich has decided that in proceedings at the UPC, the phrase "at least one of A, B, and C" implies that all three elements (A, B, and C) must be present, at least in some quantity. The "and" thus indicates a cumulative requirement. Conversely, the phrase "at least one of A, B or C" means that at least one of the elements A, B, or C must be present, but not necessarily all three. This should be considered in drafting and prosecuting EP patent claims! Specific interpretational issues: The Meaning of embodiments In UPC CFI 373/2023 the LD Düsseldorf decided that a specific embodiment does not limit a broader interpretation of claim that is supported by the claim itself and the rest of the material for interpretation. Specific interpretational issues: Materials for interpretation According to LD Düsseldorf, admissible materials for interpretation are limited to the description and the drawings, while prior art documents may be used only if they are referenced in the patent. Also, statements made by the patent proprietor during the prosecution or opposition proceedings shall not be considered. On the contrary, the LD Munich used the prosecution file, particularly claim amendments made, as admissible material for claim interpretation. The Court of Appeal has not yet clarified this.