ODDFELLOW MARCH 2022
J.A. McStea, Teemacs GmbH
Bubendorf 6 March 2022
We appear to be on our way, at last…
Barring minor inconveniences, such as the outbreak of World War III, the Unified Patent Court seems to be likely to open as early as later this year. On 19 January, Austria deposited its instrument of ratification, thus allowing the Phase for Provisional Application to commence (recruitment and training of judges, getting IT systems up and running, etc.), Germany is withholding the deposition of its ratification until this phase is finished and it is satisfied that the court will be functional. It will then deposit. The UPC will commence 4 months from the German deposition.
Or so the theory goes. However, we may not yet be out of the woods. One opponent is the FFII (Foundation for a Free Information Infrastructure), a German organisation that is hostile to software patents, and that sees the Unitary Patent /UPC as a back door to introduce the software patents that it seeks to prohibit. And then there are gents such Prof. Dr. Thomas Jaeger, who said this. And I’m sure that renowned UPC opponent Dr. Ingve Stjerna is still lurking somewhere in the background. It could mean further challenges to the UPC that still have the possibility of strangling the whole enterprise in its cradle.
Prof. Dr. Jaeger proposes an alternative to the UPC, using the Benelux Court of Justice. The Benelux Court of Justice, which covers the three Benelux countries, came into being in 1974. Alas, I have no access to the GRUR article in which Prof. Dr. Jaeger presents his thoughts, so I can’t comment, but clearly we’re not out of the woods yet. My feeling is that any such attack on the UPC will at best delay its arrival – the EU has come too far with, and invested too much in, this to be derailed now.
You may remember that, under previous EPO President, Benny the Batt, the Boards of Appeal were exiled to Haar on the outskirts of Munich, coincidentally (??) also the location of Germany’s largest mental hospital. The latest news is that they’re returning to central Munich (all sounds a wee bit like The Grand Old Duke of York, not to be confused with his successor in title, who apparently had altogether different ways of marching), to the Pschorr Höfe, just up the road from Munich’s main railway station and the Munich home of the Opposition Divisions.
Speaking of Boards of Appeal, I have this theory that they deliberately upset the applecart every now and then, just to make sure that we’re still paying attention. It has always been a fact of life for us that, when allowable claims were agreed with the EPO Examining Division, the description would be brought into conformity. This requirement became much stricter in the Guidelines as modified in 2021, in which embodiments no longer covered by the amended claims were required to be deleted. And then along came T1989/18, which said that there was absolutely no basis in the EPC for this requirement. The Board considered previous grounds in Articles 69 (extent of protection determined by the claims, as interpreted by the description), Article 84 (claims shall be clear and concise, and be supported by the description) and Rule 48 (patent application should not contain irrelevant or unnecessary matter), and found them wanting.
This contradicts previous Board decision T1808/06, which stated, among other things
In order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear. Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated.
So, this will probably end up before the Enlarged Board. As a result, the recent 2022 update to the Guidelines makes no mention of this decision, and the requirement remains.
The EPO is famously hostile to added matter. This issue rose rather bizarrely in T471/20, in which a patent was invalided for adding matter – in the discussion of the prior art. Mention of the prior art is a frequent requirement of the Examining Division, and normally it causes no problem – it has long been established that this does not constitute added matter. The patent dealt with a food product handling system, which comprised a robot for moving stuff around. The Examiner suggested that a bit of prior art relating to a filing unit be introduced, and the applicant did this, including the sentence that the filing unit was “not a robot”. The opponent convinced the Opposition Division that the filing system did constitute a robot, and by making this change, the patentee had effectively changed the meaning of “robot” in the patent, thereby adding matter. On appeal, the Board held that the addition of prior art was a special case, and that it did not change the scope of the claims. However, it does constitute a warning that one needs to be careful with all amendments before the EPO.
Swizzieland has now dropped most of its Covid restrictions, keeping only the mask requirement on public transport. The result is a completely predictable rise in the number of Covid cases. It would appear that, given the more contagious, but slightly less nasty, nature of the Omicron variant, Switzerland has decided to live with it. Personally, I’m glad that Givaudan is remaining cautious and encouraging the right measures to keep infections down. We get weekly bulletins from the ZIC in Kemptthal – in last week’s, 14 staff members were in isolation. I’m personally staying away from the Patent Department at Zug for as long as I can. I actually don’t need to go there at all, but it’s nice to see the other folk.
Another sign of the return to normality is the return of Fasnacht, Basel’s annual carnival, held by Protestant Basel one week later than the traditional Mardi Gras/Shrove Tuesday carnivals in Germany and elsewhere. To Baslers, this is die drey scheenste Dääg (the three most beautiful days) and many enthusiasts have calendars that count down to the next one. Our younger daughter is a keen Fastnachtlerin, having joined a clique (the organisations that celebrate Fasnacht) in her university years, so she is currently staying with us. We tend to pass like ships in the night – she’s sleeping when we’re awake and vice versa. This is the first Fasnacht since 2019, and is a somewhat reduced one, with no Cortèges (the big parades usually held on the Monday and Wednesday), but there will be Fasnachler/innen everywhere, playing and drumming, day and night (many inner Basel residents choose to go on holiday on these three days). The whole thing starts with Morgestraich at 4.00am on the Monday (tomorrow morning as I write) and ends exactly 72 hours later on the Thursday.
The Fasnacht drumming tradition spawned Basel’s Top Secret Drum Corps, which has gone on to international fame, including several appearances at the Edinburgh Tattoo, and even playing with that other famous drum corps here.
Continuing with things Covid, I had my first experience of a Zoom Boards of Appeal oral proceedings a couple of weeks ago. It went very well in all senses (technically and the fact that we won). How long this will go on for remains to be seen – I just received an Opposition Division summons to oral proceedings, which pushed off the decision as to how they were to be conducted to sometime in the future. The Germans are still being cautious, although how Covid restrictions are implemented are very much a matter for the individual German states. For example, Baden-Württemberg, just across the border, requires the wearing in shops of FFP2 masks only, so I keep one in the car, should I do any shopping in Germany. Now is actually a good time for shopping; with the uncertainty caused by Vlad the Impaler trying to reconstitute the Tsarist Empire, the Euro has fallen to close to parity with the Swiss franc, so I should go and buy a substantial slice of Germany before the price goes up.
Sadly, Vlad is merely confirming the answer to the question “where does a gorilla sit in a restaurant?” (Anywhere it wants). As Tom Lehrer famously put it in Send the Marines:
For might makes right And ‘til they’ve seen the light They’ve got to be protected All their rights respected Until someone we like can be elected!
I don’t get it; here we are, as a species, busily barbecuing the entire planet, but, instead of doing something about it, parts of the species make an even bigger mess. Or is Vlad being kind and seeking to solve the climate change problem by removing a substantial proportion of the potentially-polluting population? Hopefully, with his nuclear sabre-rattling, he doesn’t try to improve on this performance.
My cycling route to the office continues to change as the railway renewers in the valley keep finding new bits of road to dig up. The other night, I arrived at my normal cycling route, only to find that it no longer existed, and I had to hunt around in the dark for an alternative that preferably didn’t involving sharing the road with a lot of cars. Swiss motorists are generally careful of cyclists, but I prefer to avoid cars as completely as I can. My brother in Ireland was recently knocked off his bike by an errant motorist, fortunately suffering only bad bruising. He has since equipped the bike with a camera, which hopefully will remain purely ornamental.