http://www.bardehle.com/ News of Bardehle Pagenberg en http://www.bardehle.com/fileadmin/img/Bardehle_Pagenberg_icon.jpg http://www.bardehle.com/ 75 75 News of Bardehle Pagenberg TYPO3 - get.content.right http://blogs.law.harvard.edu/tech/rss Thu, 03 May 2012 14:44:00 +0200 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/ip-report-2012ii.html The current edition of our newsletter features the latest developments in IP Law. IP Report... IP Report 2012/II is available as pdf-download and online version.]]> Kanzleinews Home Featured News Thu, 03 May 2012 14:37:00 +0200 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/cologne-appeal-court-milka-successfully-defended-against-alleged-infringement-of-ritter.html BARDEHLE PAGENBERG successfully defended Kraft Foods Deutschland GmbH, Bremen, against alleged... BARDEHLE PAGENBERG (Munich): Dr. Henning Hartwig (Attorney-at-Law, Partner), Dr. Alexander von Mühlendahl, J.D., LL.M. (Attorney-at-Law), Dr. Philipe Kutschke (Attorney-at-Law) Representatives Ritter Schönbuch GmbH & Co. KG: Gleiss Lutz (Stuttgart): Dr. Andreas Schabenberger (Attorney-at-Law) Cologne Appeal Court (6^th Civil Senate) Hubertus Nolte (Presiding Judge)]]> Kanzleinews Wed, 11 Apr 2012 00:00:00 +0200 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/bardehle-pagenberg-wins-managing-ip-global-awards-2012-germany-contentious-ip-firm-of-the-year.html BARDEHLE PAGENBERG proudly announces the winning of the Managing IP Global Awards 2012“Germany... BARDEHLE PAGENBERG proudly announces the winning of the Managing IP Global Awards 2012
“Germany contentious IP Firm of the Year”. More than 250 people attended the award winning ceremony and gala dinner at the Dorchester Hotel in London on the evening of March 15, 2012.  The specialist magazine MIP presented its “Managing IP Global Awards 2012” to private practice firms, in-house counsel teams and individuals for outstanding achievement in the field of intellectual property law.  BARDEHLE PAGENBERG was awarded in the category “Germany contentious IP Firm of the Year” for a series of infringement cases won in 2011 in the field of patents, trademarks and designs, including clients from Europe, the United States and Asia and covering industries such as computers, electronic games, sports equipment, luxury goods, cosmetics, optics and pharmaceuticals.  These can be verified in the corresponding press releases on the firm's website www.bardehle.com. BARDEHLE PAGENBERG acts from offices in Munich, Dusseldorf, Paris and Barcelona for its German and international clients in prosecuting and litigating IP rights, ranging from global players to small and medium-sized innovation-driven companies.  Patents, trademarks and industrial designs being often an essential element of a company’s business model, it is paramount for the firm’s clients to have these rights effectively protected, defended and enforced.  BARDEHLE PAGENBERG thanks its clients for their trust over the years and feels very honoured to be rewarded for its litigation work with the “Managing IP Global Awards 2012”. ]]> Kanzleinews Tue, 20 Mar 2012 00:00:00 +0100 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/bardehle-pagenberg-successful-in-a-series-of-community-design-invalidity-proceedings-before-ohim.html BARDEHLE PAGENBERG has been successful in a series of three Community design invalidity proceedings... i.e., a Chinese design patent registration published prior to the relevant date of application of the accused Community designs.  The Office found the contested Community design new but lacking “individual character” in the sense of Article 6 Community Design Regulation. This result is an example of the European novelty approach, which is world-wide in scope and without limitation in time, but requires that the circles specialised in the sector concerned in the European Union could reasonably be expected to have known of the prior designs.  Under this approach, prior art may prove to be harmful when challenging a Community design even if the prior design originates from distant jurisdictions, such as China, Japan, Taiwan, Korea etc.  In fact, the Office – the Invalidity Division as well as the Board of Appeal – confirmed repeatedly that publications from these and other countries could be easily searched and, therefore, “reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community” (Article 7 [1] CDR). The decisions are not final. Representative Industex SL: BARDEHLE PAGENBERG (München): Dr. Henning Hartwig (Attorney-at-Law, Partner), Dr. Philipe Kutschke (Attorney-at-Law, Associate) Representative Fitness Brands, Inc.: Patentanwälte Westphal, Mussgnug & Partner (München): Michael Bickel (European Patent Attorney) OHIM (Invalidity Division): Dr. Martin Schlötelburg (rapporteur)]]> Kanzleinews Mon, 19 Mar 2012 15:18:00 +0100 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/motion-submitted-to-the-german-parliament-no-patentability-for-agricultural-livestock-and-plants.html On 17 January 2012, the CDU/CSU, SPD, FDP and Bündnis 90/die Grünen parliamentary parties submitted... The global significance of green biotechnology The significance of global green biotechnology is huge. 140 million hectares are taken up by the cultivation of these plants worldwide. While large quantities of genetically modified plants are manufactured and sold in the USA and Asia, the acceptance of such plants is continuing to decline in Europe. One way out of this problem is to produce new non-genetically modified plants. In addition to conventional breeding, the focus is here on more efficient marker-assisted breeding. As with conventional breeding methods, use is made of crossbreeding and selection. The molecular markers mean that the plants generated by crossbreeding are selected more efficiently. After selection, the plants no longer contain the markers, with the result that the plants created are not genetically modified. Current patenting practice The EU's Biotechnology Directive 98/44 aims at strengthening the legal protection of biotechnological inventions. This was implemented in German law in 2005. The Directive was also implemented in the European Patent Convention (EPC) by the European Patent Office. The Directive and the adjusted German and European patent legislation lay down that inventions for animals and plants are patentable provided that the technical teaching of the invention is not limited to a specific animal race or plant variety, which are explicitly excluded from patentability. The justification for the exclusion of plant varieties is that varieties protection provides a complementary property right and there is no need for duplicate protection. There is no such complimentary property right for animal races. The German Patent and Trademark Office (GPTO) and the European Patent Office (EPO) issue patents for inventions concerning plants and animals on the basis of this EU Directive. The motion The starting point for the motion is the provision in Art. 53b) second alternative of the EPC, according to which essentially biological processes for the production of plants or animals are excluded. In its decisions in the "Tomato" and "Broccoli" cases dated 9 December 2010, the EPO's Enlarged Board of Appeals laid down when a process constitutes an essentially biological process that is excluded from patentability. The authors of the motion now argue that the exclusion in Art. 53b) of the EPC, which only excludes processes for the production of plants and animals from patentability, logically also ought to exclude plants and animals that have been created by such processes. The current Patent Act protects plant breeders The German and European patent offices grant patents to inventions that are new, based on an inventive step and capable of industrial application. Inventions that concern animals or plants are therefore granted a patent if these animals or plants are not obvious on the basis of what is already known and have beneficial properties. The inventor thus makes a contribution and receives the patent that grants him exclusive rights for a limited period of time. Where genetically modified animals or plants are concerned, this practice is not called into question by the opponents, and instead the motion only concerns the case where the agricultural livestock or plants have been obtained by means of conventional breeding processes. Even if a known process is applied, this does not mean that patentable products with new advantageous properties have not been obtained. For instance, it has long been known that exposure to radiation can modify the properties of bacteria. If known bacteria are exposed to radiation and a new bacterium is produced that differs from the known bacteria in a non-obvious manner and has beneficial properties, it is patentable. There is no obvious reason why the inventor who uses conventional breeding processes should be denied his reward, i.e. the grant of a patent. This applies in particular if the breeding leads to an agricultural animal that cannot be protected by another intellectual property right in the same way as varieties protection protects agricultural plants. The opponents of the patenting of plants argue that the exclusion of processes for the production of animals and plants was included in the Patent Act in order not to impede conventional animal and plant breeders. This purpose, as shown below, is also achieved if the present patenting practice is retained. The German Patent Act lays down that the use of a patented plant for the purpose of producing a new plant variety does not constitute a patent infringement (Sec. 11 No. 2a, Patent Act). Accordingly, the Patent Act already takes sufficient account of the plant breeders' reservations. The situation is different for animal breeders. The use of the protected animal for breeding purposes constitutes a patent infringement. If agricultural livestock were not patentable, it is not only the use for breeding purposes that would be unrestricted, but also any further use for commercial purposes, with the result that anyone who has bred a new animal would be deprived of rights. There would thus be no incentive whatsoever for the commercial breeding of new agricultural livestock. The German Patent Act, however, limits the patent protection for agricultural livestock (farmer privilege). The patent holder is entitled to the rights to the first generation of agricultural livestock and plants. If the reproduction of this first generation is not for commercial purposes but only serves the farming operations, subsequent generations do not fall under the protection of the patent. The existing patent legislation thus takes account of the interests of the plant breeders and the farmers and restricts patent protection. A more extensive exclusion of agricultural livestock and plants obtained by conventional breeding processes does not appear to be necessary. It should be pointed out that in the tomato case (EP1211926B1) the patent process claims were deleted, but claims to the tomatoes obtained by conventional breeding processes were retained. The opponent has requested that the EPO's Enlarged Board of Appeal address this issue once again. Thus, suspense remains. ]]> Gewerbliche Rechtschutz Infos Wed, 22 Feb 2012 12:32:00 +0100 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/dusseldorf-appeal-court-grants-protection-against-imitation-of-a-rear-light-for-trucks.html In a decision which has just become final, the Dusseldorf Appeal Court granted protection against... BARDEHLE PAGENBERG (Munich): Dr. Stefan Abel (Attorney-at-Law, Partner), Pascal Böhner (Attorney-at-Law, Certified IP Lawyer) Representatives Nicolaos Dasteridis SA: Von Huebner (Munich): Dominik von Huebner (Attorney-at-Law) Dusseldorf Appeal Court (20. Civil Senate) Professor Wilhelm Berneke (Presiding Judge)]]> Kanzleinews Thu, 02 Feb 2012 17:08:00 +0100 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/german-federal-supreme-court-strengthens-position-of-foreign-language-patent-applicants.html Mistakes in the German translation of a patent application filed in a foreign language can be... a priori in the German language, because in this case, he would expose himself to the danger of losing technical disclosure content which could be missing later, if the case may be, for delimitation vis-à-vis the prior art. On the other hand, it would not make sense to first give the possibility to the applicant to safeguard his filing date for his foreign-language application, and to then deny that filing date if the subsequently filed translation is faulty. The Federal Supreme Court does not find the minimal requirements for the translation to be higher than the foreign-language application itself. These minimal requirements are: the name of the applicant, an application for grant and – at least the appearance of – a description. The law does not require any patent claims for the granting of an application date. If the above preconditions for a translation are fulfilled, the legal fiction of the non-existent application does not apply, which means that in the concrete case the claims missing in the translation did not trigger the legal consequence of the loss of the application date. The decision is very welcome since it clarifies that mistakes in the translation of patent applications not filed in the German language are not legally detrimental. Such mistakes do not lead to loss of the application date and can be corrected at any time during the application proceedings. From an attorney’s point of view, the decision is also to be evaluated very positively. If the Federal Supreme Court had decided that mistakes in the patent applications may indeed lead to a loss of the application date, the German representative of the applicant would be exposed to substantive liability risks. He would have the choice to either file the foreign-language application of his client as it is, and to file a translation later, or to file a German translation directly. The first alternative would involve the risk that a subsequently filed faulty translation may lead to a loss of the application date. The second alternative entails the risk to lose technical disclosure content which may later be missing, as the case may be, for delimitation against the prior art.]]> Gewerbliche Rechtschutz Infos Thu, 02 Feb 2012 12:04:00 +0100 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/cologne-appeal-court-bardehle-pagenberg-again-successful-in-design-infringement-proceedings-regardi.html The Swiss-based Coltène/Whaledent AG, an internationally leading developer, manufacturer and... ex parte and issued a preliminary injunction which, after first appeal of Edelweiss, was confirmed by judgment of June 29, 2011 (Case No. 84 O 69/11). The Cologne Appeal Court recently followed the assessment of the lower instance and also found validity and infringement of the Community designs (decision of November 25, 2011 – Case No. 6 U 155/11). The Cologne Appeal Court held that it was not decisive how the asserted designs had been developed, but whether the result of this process produced a different overall impression compared with another, earlier design. In the case at hand, the prior art submitted by Edelweiss, however, was not detrimental to novelty and individual character of the asserted designs; the corresponding evidence was deemed to be inappropriate. The Cologne Appeal Court also found infringement as the asserted and accused designs produced the same overall impression, while minimal differences “receded into the realm of the imperceptible”. Representatives Coltène/Whaledent AG: BARDEHLE PAGENBERG (Munich): Dr. Henning Hartwig (Attorney-at-law, partner) Representatives Edelweiss Dentistry Products GmbH: Hofstetter, Schurack & Skora (Munich): Dr. Patrick Baronikians (Attorney-at-law) Cologne Appeal Court (6th Civil Senate): Hubertus Nolte (Presiding Judge)]]> Kanzleinews Wed, 14 Dec 2011 17:12:00 +0100 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/ecj-rules-on-validity-and-infringement-test-under-european-design-law.html Court of Justice of the European Union on the validity and infringement test under European design... Court of Justice of the European Union on the validity and infringement test under European design law (decision of October 20, 2011 – Case C-281/10 P – PepsiCo v Office for Harmonisation in the Internal Market – Grupo Promer) On October 20, 2011, the Court of Justice of the European Union, Europe’s final authority on Community design law, rendered its long-awaited decision in PepsiCo v OHIM (Case C-281/10 P) with the central issue being the manner in which differences or similarities between conflicting designs are established under the Community Design Regulation (“CDR”). The underlying products were small metal plates, also referred to as “rappers”, playthings inserted in product packages, and the validity of the Community design was challenged to be “in conflict with”, i.e., to infringe an earlier Spanish design. The proceedings before the Court of Justice focused on four legal questions (a fifth question related to an alleged distortion of the facts is not part of this review), namely whether the lower instance, the General Court of the European Union, committed any errors in relation to (i) the constraints on the designer’s freedom (Article 10 [2] CDR), (ii) the concept of the informed user and his level of attention (Article 10 [1] CDR), (iii) the scope of the General Court’s power of review (Article 61 [2] CDR), and (iv) whether it was possible to compare the underlying goods rather than the conflicting designs (Article 10 [1] CDR). (i) Starting with possible constraints limiting the degree of freedom of the designer in developing the design, the Court of Justice found that assessing such constraints would relate to findings of a factual nature made by the General Court rather than to any legal questions. In fact, PepsiCo did not challenge the facts as being distorted and neither disputed the relevance of the criteria for establishing the designer’s degree of freedom (inter alia, the constraints of the features imposed by the technical function of the product or an element thereof or by statutory requirements applicable to the product). Thus, the Court of Justice, in accordance with settled case law, held the challenge of that assessment as inadmissible. (ii) Turning to the concept of the informed user and his level of attention, this concept, according to the Court of Justice, first “must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise.” Consequently and second, such concept had to be understood as “referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.” Thus, the very nature of the informed user would mean that, when possible, he will make a direct comparison between the designs at issue. However, it cannot be ruled out that such a comparison may be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the devices which the designs at issue represent. Third and finally, as regards the informed user’s level of attention, the Court of Justice held that such user, without being a designer or a technical expert, would know “the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.” (iii) As regards the scope of the General Court’s power to review the Office’s examination of the differences and similarities between the designs at issue and its determination of whether or not there is a similar overall impression, the Court of Justice found that the in-depth examination of the designs at issue carried out by the General Court, contrary to the position also taken by the Office itself, did not go beyond its power to alter decisions under Article 61 CDR. (iv) Lastly, and related to whether the Office or the General Court are allowed to base the assessment of the designs in conflict on a comparison of physical samples of actual products rather than only on the designs as disclosed and represented in the contested and in the earlier design registration, the Court of Justice found that such comparison was not mistaken, given that the informed user was different from the ordinary average consumer. The Court added that in the present case the physical comparison was done only to confirm the judgment already reached based on the respective registrations.]]> Home Featured News Fri, 28 Oct 2011 10:58:00 +0200 http://www.bardehle.com/no_cache/en/news/news_of_the_firm/release/article/ecj-rules-on-validity-and-infringement-test-under-european-design-law-in-re-pepsico-v-ohim-grup.html Court of Justice of the European Union on the validity and infringement test under European design... Court of Justice of the European Union on the validity and infringement test under European design law (decision of October 20, 2011 – Case C-281/10 P – PepsiCo v Office for Harmonisation in the Internal Market – Grupo Promer) On October 20, 2011, the Court of Justice of the European Union, Europe’s final authority on Community design law, rendered its long-awaited decision in PepsiCo v OHIM (Case C-281/10 P) with the central issue being the manner in which differences or similarities between conflicting designs are established under the Community Design Regulation (“CDR”). The underlying products were small metal plates, also referred to as “rappers”, playthings inserted in product packages, and the validity of the Community design was challenged to be “in conflict with”, i.e., to infringe an earlier Spanish design. The proceedings before the Court of Justice focused on four legal questions (a fifth question related to an alleged distortion of the facts is not part of this review), namely whether the lower instance, the General Court of the European Union, committed any errors in relation to (i) the constraints on the designer’s freedom (Article 10 [2] CDR), (ii) the concept of the informed user and his level of attention (Article 10 [1] CDR), (iii) the scope of the General Court’s power of review (Article 61 [2] CDR), and (iv) whether it was possible to compare the underlying goods rather than the conflicting designs (Article 10 [1] CDR). (i)  Starting with possible constraints limiting the degree of freedom of the designer in developing the design, the Court of Justice found that assessing such constraints would relate to findings of a factual nature made by the General Court rather than to any legal questions. In fact, PepsiCo did not challenge the facts as being distorted and neither disputed the relevance of the criteria for establishing the designer’s degree of freedom (inter alia, the constraints of the features imposed by the technical function of the product or an element thereof or by statutory requirements applicable to the product). Thus, the Court of Justice, in accordance with settled case law, held the challenge of that assessment as inadmissible. (ii)  Turning to the concept of the informed user and his level of attention, this concept, according to the Court of Justice, first “must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise.” Consequently and second, such concept had to be understood as “referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.” Thus, the very nature of the informed user would mean that, when possible, he will make a direct comparison between the designs at issue. However, it cannot be ruled out that such a comparison may be impracticable or uncommon in the sector concerned, in particular because of specific circumstances or the characteristics of the devices which the designs at issue represent. Third and finally, as regards the informed user’s level of attention, the Court of Justice held that such user, without being a designer or a technical expert, would know “the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.” (iii)  As regards the scope of the General Court’s power to review the Office’s examination of the differences and similarities between the designs at issue and its determination of whether or not there is a similar overall impression, the Court of Justice found that the in-depth examination of the designs at issue carried out by the General Court, contrary to the position also taken by the Office itself, did not go beyond its power to alter decisions under Article 61 CDR. (iv)  Lastly, and related to whether the Office or the General Court are allowed to base the assessment of the designs in conflict on a comparison of physical samples of actual products rather than only on the designs as disclosed and represented in the contested and in the earlier design registration, the Court of Justice found that such comparison was not mistaken, given that the informed user was different from the ordinary average consumer. The Court added that in the present case the physical comparison was done only to confirm the judgment already reached based on the respective registrations.]]> Thu, 27 Oct 2011 18:01:00 +0200