Oddfellow July 2021

J.A. McStea, Teemacs GmbH

Oddfellow 2021_2

Bubendorf, 19 July 2021

Hooly dooly!

It’s happening! Well, OK, a substantial step towards its happening has been taken. On 9th July, the German Constitutional Court announced its decision rejecting the preliminary injunctions against the Unitary Patent/Unified Patent Court on the grounds of unconstitutionality. This means that the German President can now sign the deed of ratification, without waiting for the reasoned decision. The path ahead is still rocky. For one thing, there’s the problem of London being specifically written in as one of the courts of the Central Division. One current view is that the mention of London can be ignored, as the UK is no longer an EU member, therefore this designation is meaningless, and that work that would have been done by London can be temporarily divided between Paris and Munich until a successor to London is decided (the Italian Government has thrown Milan’s hat into the ring). There’ll also have to be a setting up of infrastructure, selection and training of judges, and all that other boring paraphernalia, but there seems no doubt that a major hurdle has been crossed, and the IP world in Europe is about to be substantially changed. So, as Winston Churchill would have put it, it’s not the beginning of the end, but certainly the end of the beginning.

I suspect that we’ll have the UPC towards the end of 2022. Then we’ll have to decide, when we get a grant from the EPO, whether we want a unitary patent or the traditional “bundle” type. Of course, in the end, the UPC will adjudicate on both types. Given that Givaudan rarely validates in more than 5 countries, and that two of those countries (the UK and Switzerland) are outside the system, I can’t see the value in it for us. It will be of more interest to the big boys, such as Big Pharma, which file in lots of countries – the savings on renewal fees could be substantial. Although, again, they are certain to “opt out” their most important patents, until they see how the system works in practice.

“The world turned upside down” was the title of a 17th century song protesting against the Puritan prohibition of Christmas celebration during the Protectorship of Oliver Cromwell. (According to legend, it was the tune played by the British at the surrender to Washington at Yorktown). However, in those cases, the world turned right-way up (sort of) eventually. Will the world turn right-way up in the era of Covid? I’m beginning to doubt it, and to suspect that, like the cold and the flu, we may be living with this forever. We still don’t have a cure for AIDS, but we have treatments that have changed a sentence of death into a chronic, but treatable, disease. I see that you’re still having lockdowns Downunder. Here, the UK is about to open up – the UK’s court jester, Boris Johnson has proudly announced Freedom Day. The rest of the world waits to see whether this will be such a good idea.

The latest EPO Official Journal to come my way has one example of the changes wrought by Covid. El Presidente has decided that all oral proceedings before the Receiving Section shall henceforth be by video conference. They can be held on the EPO premises at the request of the applicant or at the instigation of the Receiving Section, but only if there are serious reasons against the video conference.

During the COVID crisis, the other oral proceedings at other stages (examination, opposition, appeal) have been held by video conference. This has led to a case before the Enlarged Board, G1/21, in which a party contested the legality of such proceedings being held without the consent of the parties. The oral proceedings (by video conference, of course, with the public able to listen in) were held on 2 July, the previous OP having been cancelled because of allegations of partiality of some of the Board members. There were apparently all sorts of technical difficulties on the day (hardly a good advertisement for virtual oral proceedings). And when the decision came (read the press release here), it said:

During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.

, reasons to follow. In other words, it sidestepped the very question we all wanted answered – what about times when there is NOT a general emergency? The Board said it wasn’t going to answer this one.

Another change has been wrought in the various patent attorney qualifying exams, which were done on-line. The CIPA ones were a great success, so much so that there’s talk of always doing them this way. The EQEs did not work quite so well – there were problems with some of the UK and French candidates, who were confronted with the German language paper. They could get to the correct paper by refreshing the page, but they had previously been instructed not to refresh the page. In some cases, it took 30 minutes to get to the right page. The EPO guaranteed that no candidate would be disadvantaged by this problem, although there may be candidates who logged out completely and then couldn’t get back in again.

The EPI is now proposing an entirely new EQE system, described here. It is a modular system, having two tracks, a “practical” track and a “legal” track, each having particular modules, to be tested at different times. Comments on the proposal have been invited, and one tutor has shared her thoughts here. Personally, I’ve always been bothered by the “lottery” element of these exams – when a student passed, I would present them with a home-made trophy that took the form of a truncated wooden pyramid on which were mounted two large dice about to fall into a double-six, and bearing a brass plate engraved with their name and “for whom the dice rolled”. Perhaps the lottery element can never be removed, but it can certainly be usefully diminished, and it would appear that the EPI is trying to address this.

On a different European topic, Carpmael and Ransford, one of the UK’s most prestigious patent attorney firms, is being sued to the tune of a reported 1.05 billion Euro by BASF, the world’s biggest chemical company. Why? They missed the deadline for filing an appeal in a case rejected at opposition. You have 2 months from the date of an opposition decision within which to appeal, and a further 2 months within which to lodge the grounds of appeal. Missing these deadlines is only excusable with a VERY good excuse – the dog ate my homework simply won’t do, it would need to be Godzilla ate the entire building. In this case, the person handling the case was a retired partner acting as a consultant, working mainly from home and reliant on files sent to him (and travelling at the time that the appeal fell due). The Carpmaels records department didn’t notice the deadline in the documents from the EPO, so it wasn’t docketed, and it was only when BASF asked, “What’s happening?” that they realised the error.

Carpmaels lodged the notice of appeal, at the same time arguing for re-establishment, on the ground that this was merely an occasional error in an otherwise well-functioning system, something that the EPO has accepted before. Not this time; “The fact that the revocation decision passed through so many hands without being identified as such indicates that these persons were not sufficiently instructed that mail must be read completely and thoroughly, or that no effective cross-check was performed,” it said.

The patent related to a filter for diesel emissions, and BASF calculated the loss of business at just over 1 billion Euro. Not so, said Carpmaels, we admit to missing the appeal deadline, but the patent was clearly invalid and the Board of Appeal would have upheld the Opposition Division’s decision. So, oddly, Carpmael is arguing that the patent whose validity they presumably fought hard to uphold wasn’t actually worth upholding. It’ll be interesting to see what a UK court makes of it, as we have no idea what the Board of Appeal would have said in its preliminary opinion. Moral of the story – check those deadlines!

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