IP Report 2012/I

Reported by Dr. Christian Haupt

Omissions and mistakes in the German translation of a patent application filed in a foreign language can be corrected anytime and do not lead to a loss of the filing date.

At the German Patent and Trademark Office (GPTO) patent applications can be filed that are not written in the German language. The applicant thus saves the filing date for the technical disclosure content of his foreign-language application. However, a German translation must be filed within three months after the filing of the foreign-language application which then becomes the basis of the further examination procedure. In the present case, the Federal Supreme Court decided on the consequences which omissions and mistakes in the German translation may trigger.

In the case to be decided by the Federal Supreme Court the GPTO had ruled that a foreign-language patent application was to be deemed as not filed if later (after the three months period) the translation showed any omissions. The omissions became manifest in that only 12 of the 26 claims of the foreign-language application were entirely translated. The legal fiction of the non-filed application – that is the denial of the filing date – is provided for by the law (Section 35 (2), p. 2 German Patent Act) in case of a translation not duly filed within the three months period. The GPTO had therefore equated an incomplete translation with a missing translation.

In the reported decision the Federal Supreme Court found that such conduct was contrary to the spirit and purpose of the law, since by Section 35 German Patent Act the non-German applicant was explicitly given the possibility to safeguard the disclosure content of his foreign-language application. The foreign applicant should not be forced to file 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 save his filing date for his foreign-language application, and to then deny that filing date if the subsequently filed translation is faulty. Consequently, according to the Federal Supreme Court, an incomplete or faulty translation is not to be equated with an entirely missing translation.

The Federal Supreme Court does not find the minimal requirements for the translation to be higher than for 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-filed application does not apply, which means that in the case to be decided by the Federal Supreme Court the claims missing in the translation did not result in the loss of the application date.

Remarks
The decision is very welcome since it clarifies that omissions or mistakes in the translation of patent applications not filed in the German language are not legally detrimental. Such omissions and mistakes do not lead to a loss of the application date and can be corrected at any time during the application proceedings. The decision is also in line with an earlier judgement of the Federal Supreme Court. In its decision “Nabenschaltung II” (Gear Hub II) of March 18, 2010 – Case Xa ZR 74/04 – the Court had determined that omissions in the German translation of a European Patent do not lead to the patent not having effect for the Federal Republic of Germany – a legal consequence which the law provides for the case that no translation whatsoever was filed with the GPTO. Some instance and appeal courts had decided earlier that even marginal omissions in the translation lead to ineffectiveness of the European Patent. Fortunately, the Federal Supreme Court has stopped this practice with the afore-said decision, ruling that omissions are to be regarded as mistakes which do not lead to the legal consequence of ineffectiveness – a view which the Court consequentially holds with the presently reported decision concerning application procedures before the GPTO.

Reported by Michael Platzöder

AIf the subject-matter of a claim in a patent turns out to be not patentable, this does not automatically also render the subject-matter of a claim depending on that claim not patentable.

In the decided case the defendant was the proprietor of a European Patent (“patent-in-suit”) that was granted also with effect for the Federal Republic of Germany and which related to a sensor arrangement for crash detection in automobiles. The plaintiff had filed a nullity suit at the Federal Patent Court and requested a declaration of nullity of the patent-in-suit in its entirety based on an alleged lack of inventive step. During the nullity proceedings the patent-in-suit was defended in an amended version, which contained an amended main claim 1 and claims 2 and 3 depending therefrom, as well as claims 4 – 7 depending directly or indirectly from claim 3. The Federal Patent Court maintained patent claims 1 and 2 as defended and declared the patent-in-suit null and void beyond these claims.

The Federal Supreme Court confirmed the Federal Patent Court’s finding. However, it found that the Federal Patent Court, while achieving the same result, had erroneously justified the nullity of dependent patent claims 4 – 7 merely with the nullity of patent claim 3 to which they refer. According to the Federal Supreme Court’s decision, if the subject-matter of a claim (here claim 3 in a (granted) patent turns out to be not patentable, this does not automatically also render the subject-matter of a claim depending from it (here claims 4 – 7) not patentable. However, the patent is to be declared null and void also with respect to the attacked dependent claim (here claims 4 – 7), if it is neither asserted nor otherwise apparent that the additional features would lead to a different judgment regarding patentability.

Remarks
The present decision is a good example of the established practice in German patent nullity proceedings according to which the invalidity of a particular claim does not already by implication also render a related dependent claim invalid. However, the proprietor is nevertheless well advised to expressly assert and argue in sufficient detail the patentability of relevant dependent claims.

Reported by Dr. Stefan V. Steinbrener

A skilled person concerned with selectively improving a data structure provided in an international standard normally feels compelled to make recourse to mechanisms already envisaged by the standard for solving the technical problem. If an assessable number of possible problem-solving approaches arise from the standard, each of which has specific benefits and drawbacks, as a rule good cause is given to take each of these approaches into consideration.

The patent in suit, EP-B-1243107, was granted by the European Patent Office for Germany as a designated state and related to a method for transmission of electronic mail messages using an SMS short message service. According to the GSM standard, such transmission of internet e-mails via SMS is already foreseen by adjusting a protocol identifier in the header information of the SMS in order to indicate that an internet e-mail is transmitted by the SMS. The data portion of the SMS then starts with the destination address of the e-mail which is separated from the e-mail contents by a blank. As an option, the standard supports the designation of plural destination addresses separated by commas and the data fields “subject” for indicating the title of the e-mail, and “real name” for indicating the actual name of the sender. These data fields are separated by parentheses or special characters. However, not all header data fields used for e-mails and specified in the internet standard RFC 822 for text messages can be reproduced with the data fields provided in the SMS standard. For instance, in the SMS standard there is no counterpart for the header data field “cc” (carbon copy) used in e-mails for informing additional addressees. The patent in suit therefore proposes a method allowing the transmission of further data fields provided in RFC 822 via SMS and thus facilitating transmission if different service providers for e-mails and SMS are involved.

According to the invention, the SMS data structure is modified in that

• the presence of plural data fields in the data portion, comprising the address and/or identification data, is indicated in a user data header information;
• the presence of the user data header information is indicated in a “second” header information;
• the plural data fields are transmitted within the data portion of the SMS, but outside of the user data and second header information, and
• the presence of plural data fields is indicated by means of an identifier in the user data header information, specifying a value which is allocated in compliance

with an allocation table for RFC 822 addressing, according to which the address and/or identification data are given in the data portion.

The Federal Supreme Court (Bundesgerichtshof) confirmed the revocation of the patent in first instance by the Federal Patent Court (Bundespatentgericht) in a nullity case.

In its opinion, the subject matter of claim 1 as granted only differed from the SMS standard by providing user data header information indicating the presence of plural data fields and “second” header information indicating the presence of the user data header information. In the SMS standard, the data used for e-mail addressing are not transmitted within the user data header information and its associated structure, but within the following payload. Furthermore, a value indicating the presence of RFC 822 address data is not defined in the SMS standard.

A skilled person, an engineer in telecommunications, would have realized that the data structure defined in the SMS standard was not suitable to reproduce all data fields provided in the RFC 822 standard. This fact would have prompted a skilled person to look for ways to transmit this information, or at least part of it like the frequently used “cc”-field, in a structured form within an SMS.

For achieving this goal, it was obvious to use the mechanisms already provided in the SMS standard. In accordance with these mechanisms, three alternatives came into consideration:

(i) further data might be introduced into the data portion ahead of the blank indicating the beginning of the payload;

(ii) the user data header information optionally provided in the SMS standard could have been used by expanding the list of indicator values; and finally,

(iii) a distribution of the data between the user data header information and the payload was conceivable as already suggested in the SMS standard in a slightly different context.

None of these alternatives was distinguished as preferable by the prior art since all approaches had specific benefits and drawbacks. Hence, it would have been obvious to expand the arrangement of address and identification data in the data portion of the SMS so that further data fields provided in RFC 822 could be included, thereby using the approach adopted in the SMS standard for the fields “subject” and “real name”, i.e. arranging the data at the beginning of the payload and separating them by specific special characters.

When pursuing this approach, the remaining task only amounted to distinguishing a short message of the newly defined type from one using conventional addressing. For the solution of this partial problem, an assessable number of possibilities were also available from the SMS standard. Theoretically, a further value indicating an “RFC 822 mail” might have been included in the header data of the short message. As an equivalent alternative, the standard classification as an “internet electronic mail” could be retained and a distinguishing criterion could be added at a logically lower layer, obviously in the user data header information principally allowing the definition of any data fields.

Since similar objections were raised against the auxiliary requests, the patentee's appeal was dismissed for lack of inventive step.  

Remarks
The revocation of the patent was confirmed by the Federal Supreme Court on the basis of a lengthy and somewhat involved argument in respect of obviousness. It is, however, remarkable that issues of “technical character” and/or “statutory exclusion” were neither raised by the parties nor by the Federal Supreme Court. Although the claimed subject matter relates to a method of transmitting e-mails via SMS, it in fact concerns the modification of a data structure (or preferably a “data format”) provided in the SMS standard, i.e. the provision and allocation of data fields in the binary header/payload configuration of a standard short message so that further addressing options become feasible and transmission between different service providers is facilitated. In the present case, this has explicitly been accepted by the Court as the “technical problem” without any further qualification. Of course, the SMS and e-mail formats are specifically adapted to the properties of the respective telecommunication systems and reflect those properties which ultimately structure any transmittable piece of information. In this sense, such formats are certainly of a technical nature, they contribute to the solution of the  “concrete technical problem” of electronic information exchange among separate networks and should thus be patent-eligible subject matter in Germany.

Reported by Dr. Rudolf Teschemacher

Since the entering into force of the European Patent Convention in its revised version (EPC 2000) on December 13, 2007, decisions of the Boards of Appeal of the EPO are subject to review by the Enlarged Board of Appeal (EBA) on the grounds that a fundamental procedural defect occurred in the appeal proceedings. Before case R 3/10, fifty-two petitions for review had been disposed of. Only one petition was successful and in that case (decision R 7/09 of July 22, 2009) the procedural violation was the consequence of the fact that the EPO was not in a position to prove the notification of a brief of a party to its adversary. In decision R 3/10, the EBA held for the first time that a fundamental violation of right had occurred in oral proceedings before a Technical Board of Appeal.

The opposition division had decided that the patent could be maintained on the basis of an auxiliary request of the proprietor of the patent. The proprietor and three of the five opponents appealed. In its communication accompanying the summons to oral proceedings, the Board of Appeal addressed the opposition ground of lack of novelty. In addition, it was said that in case novelty would be established it might be necessary to discuss inventive step.

In the oral proceedings, novelty was argued by both sides. After the parties had declared that they had no further comments, the Chairman closed the debate and informed the parties that the Board would decide on the patentability of the main request. After deliberation and upon resumption of the oral proceedings, the Chairman announced the decision that the claimed subject-matter was novel but lacked an inventive step. This was uncontested among the parties to the proceedings. In respect of the exact use of words by the Chairman, different information can be taken from the original minutes, the petitioner’s request to correct the minutes, the decision on this request for correction and from the declarations by participants produced by the petitioner.

Notwithstanding such details, the EBA concluded that there was a “very unfortunate misunderstanding”, because it had not been made clear to the parties that novelty and inventive step would be discussed together and decided together by the Board. The question whether or not there was a fundamental procedural violation had to be determined on an objective basis and the necessity to respect the right to be heard was absolute. It was neither relevant what the Board’s intention was, nor whether the considerations related to inventive step were close to the discussion on novelty, nor whether any arguments of the petitioner might have convinced the Board, nor to which extent the matter had been previously discussed in writing. The crucial point was that the proprietor had not been given the opportunity to present its arguments orally on the decisive issue of the presence of an inventive step. Thus, the decision under review was set aside and the proceedings before the Technical Board of Appeal were re-opened.

Remarks
Many of the so far unsuccessful petitions are based on submissions which show that the Board’s perception of the state of discussion in oral proceedings and the parties’ perception may be quite different. This is no surprise because the Boards of Appeal know quite well how they conduct proceedings whereas for the parties and their representatives the course of oral proceedings before a Board may be a rare and sometimes unique experience. This puts the obligation on the Boards to make a break which is evident and unambiguous when oral proceedings come to an end. The pre-printed sentence in the form for the draft minutes “the Chairman declared the debate closed” is not sufficient for this purpose, because it does not make clear that the debate is closed for the case as a whole. Rather, it should be made clear beyond any doubt that the parties have no further requests and submissions, or they should be expressly invited to submit their final requests.

The reported decision is in remarkable contrast to other decisions in review cases which took the closure of the debate as indicated in the minutes as a fiction that the parties had been given the opportunity to comment on all relevant points and to file all appropriate requests. An example is decision R 7/11 of October 5, 2011 in which the Board stated that “the necessary meaning of the expression ‘the debate is closed’, which corresponds to an important procedural step, is not open to multiple or relative interpretations.” This does not correspond to what sometimes happens in reality. Oral proceedings are often interrupted and resumed several times and it is not always made clear to the parties that an interruption might be the last one. However, the statement “the Chairman declared the debate closed” is always found in the minutes notwithstanding the actual conduct of proceedings in the individual case.

In this respect, R 3/10 also diverges from decision R 15/09 of July 5, 2010 concluding that it was not appropriate to take evidence on the actual course of oral proceedings held in the decision under review. Decision R 3/10 shows that considering the submissions from both parties including declarations from participants to the oral proceedings may result in a picture which is much more detailed than the mere statement in the minutes “the debate is closed”. The provision on taking of evidence in Article 117 EPC applies to review proceedings as well as to any other proceedings before the EPO.

Reported by Dr. Rudolf Teschemacher

By decision of October 26, 2010 (OJ EPO 2010, 637), the Administrative Council of the European Patent Organisation amended Rule 71 EPC as to the procedure to be followed after the Examining Division has informed the applicant of the text in which it intends to grant the European patent pursuant to Rule 71 (3) EPC, and added a new Rule 71a EPC as to the conclusion of the grant procedure. These amendments will enter into force on April 1, 2012. The notice of December 13, 2011 gives information about these amendments. Corresponding amendments are foreseen for the revised Guidelines which are envisaged to enter into force in June 2012.

1. The core element of the amendment to the Rules is the introduction of an additional step into the proceedings if the applicant disapproves of the text communicated to him under Rule 71 (3) EPC on the basis of which the Examining Division intends to grant the patent, because

• he files reasoned amendments or corrections to the text,
• he disagrees with amendments or corrections made by the Examining Division on its own initiative, or
• he disagrees with the grant proposed by the Examining Division on the basis of an auxiliary request.

In these cases, the applicant is not obliged to fulfil the formal requirements for grant (translation of the claims and fees) and the examination will be resumed.

2. The examination may be continued by

• issuing a second communication under Rule 71 (3) EPC if the Examining Division is prepared to allow the applicant’s main request,
• refusal of the application if the Examining Division is not prepared to allow the applicant’s main request and the respective grounds have already been communicated to the applicant,
• issuing an examination report if the Examining Division is not prepared to allow the applicant’s main request and the respective grounds have not yet been communicated to the applicant.  

3. The time limit for fulfilling the formal requirements for grant set in the communication under Rule 71 (3) EPC remains 4 months. It is fixed in the Rule, thus it cannot be extended. If the applicant fails to fulfil the formal requirements for grant in due time although there is none of the situations listed in pt. 1 (above) applies, the application is deemed to be withdrawn in accordance with Rule 71 (7) EPC. Further processing is available.

If the applicant simply disapproves of the text communicated under Rule 71 (3) EPC, the application will be refused without giving substantive reasons because there is no text agreed by the applicant in accordance with Article 113 (2) EPC