Blog entry #2 on new Rule 6 EPC

Will some applications be left with no Rule 6 EPC applicable following its amendment?

Following my previous blog entry on the amended Rule 6 EPC, I have been made aware of a curiosity in the transitional provisions of the new Rule 6 EPC. Namely, the transitional provisions may, in principle, be interpreted as implying that no Rule 6 EPC will be applying to a certain category of European patent applications.

Particularly, the two available wordings of the transitional provision reads (author’s emphasis):

1) Rule 6 EPC and Article 14(1) of the Rules relating to Fees as amended under Article 1 and Article 2 of this decision shall apply to European patent applications filed on or after 1 April 2014, as well as to international applications entering the European phase on or after that date.

(2) Rule 6 EPC and Article 14(1) of the Rules relating to Fees as amended under Article 1 and Article 2 of this decision shall apply to oppositions, appeals, petitions for review or requests for limitation or revocation filed on or after 1 April 2014. [1].

and

3. This amendment will enter into force on 1 April 2014. It will apply to European patent applications filed on or after that date, and to international applications entering the European phase on or after that date. Amended Rule 6 EPC and Article 14(1) RFees will apply to oppositions, appeals, petitions for review and requests for limitation or revocation filed on or after 1 April 2014. [2]. 

This, it would seem, implies that for direct European applications filed before 1 April 2014, but in which the examination fee is paid after 1 April 2014, the new Rule 6 EPC does not apply and the 30 % discount on the examination fee will not be available.

Furthermore, as the old Rule 6 EPC ceased to have effect on 1 April 2014, it would further seem to imply that no Rule 6 EPC will be applying to these applications and if so that no fee reduction would be available altogether.

However, it seems fair to assume that matters are not as bad as that, as surely the latter implication is not the intention of the EPO, and thus that old Rule 6 EPC will continue to apply for direct European applications filed before 1 April 2014, but in which the examination fee is paid after 1 April 2014, such that the old 20 % examination fee reduction will still be available.

This assumption would also seem to be confirmed by the EPOLine® online filing system, which asks for the filing date of the application and then, for these applications, guides the user to the possibilities of a 30 % or a 20 % examination fee reduction, no reduction not being an option.

Nevertheless, the transitional provision opens for a trap which may result in applicants inadvertently paying the wrong amount in examination fee and thus in applications being deemed withdrawn.

And what if one actually gets caught in this trap? Well fortunately the release is near and simple! Whether under the old or new Rule 6 EPC and irrespective of the specific reason for the application being deemed withdrawn, further processing is available to reinstate the application.

Furthermore, there is a chance that an erroneously paid fee is never discovered by the EPO, as the EPO will only do random checks of whether the applicant is in fact entitled to the fee reduction of Rule 6 EPC. Consequently, the patent can be granted anyway. A similar situation in the US can lead to fatal consequences since claiming small entity status without being entitled to it can be considered a fraud against the USPTO, which can lead to invalidation of the US patent. In Europe, you need not worry once your patent is granted, as an insufficient fee payment is not a ground for revoking an EP patent neither in opposition proceedings before the EPO nor in national revocation proceedings (Articles 100 and 138 EPC).

 

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Åsa Hagström, Patent Attorney

 

References:

[1] Decision of 13 December 2013 (CA/D 19/13) the Administrative Council of the European Patent Organisation (see Article 4)

[2] Notice of the EPO dated 10 January 2014

 

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Danish law can be applicable to infringing sales from UK websites

The Danish Maritime and Commercial Court has recently rendered a decision in a case regarding sale of infringing furniture designs from two British websites. The decision is interesting for practitioners as it explains which exact elements are added substantial weight, when defining which law is applicable to an online infringement.

When deciding whether sale of furniture designs identical to famous products from Arne Jacobsen and Poul Henningsen among others constitutes a copyright infringement, it can be of high significance whether Danish or UK law is applicable. As explained in this bloggers article in the latest edition of AWA Review, there is a difference of protection even though this will be reduced due to the approaching repeal of Section 52 of the UK Copyright Designs and Patents Act.

The two websites in question were www.interioraddict.co.uk and www.nlini.com. The first website was written in Danish and with a Danish speaking customer service. For those reasons alone, the court found Danish law applicable to the infringements. The latter website was originally also in Danish, but had since changed to an English version. However, as the court noted that (1) it is possible to order products to be delivered in Denmark, (2) reviews of the website and its products were available in Danish, and (3) the website had been advertised in Denmark, Danish law was also applicable to this site.

This reasoning confirms the principles of the Donner case (C-5/11) in which the European Court of Justice listed relevant factors when deciding the applicable law as choice of advertising material, choice of language and opportunities for foreign distribution. However, the Danish decision is interesting and helpful to right holders, as it confirms that these principles also apply to a website with a .co.uk domain name which is normally not seen as targeting foreign consumers. Consequently, this decision indicates that infringers cannot circumvent the requirements and protection given by Danish law simply by selling from a foreign domain address. A much welcome development for the many right holders of famous Danish design products.

When assessing the damage claim, the court gave detrimental effect to the fact that the defendants had not supplied any information as to the revenue or amount of products sold. Furthermore, and more interestingly, the court did find some degree of substitution for the less expensive products (despite these still being cheaper and marketed as replicas). Accordingly, the court found market disturbance and roughly estimated the total damage claim to be DKK 200,000 for each website.

Anders Michael Poulsen, Attorney at Law

Decision by the USPTO puts the spotlight on the “real party in interest”

One of the ways that companies in patent dense industries, such as consumer electronics, try to fend off claims from patent holders is by requesting assistance from patent risk management firms. Patent risk management firms generally assist their clients by acquiring patents, tracking litigation outcome, or by acting to remove questionable patents from the landscape.

Inter partes review* has been introduced in the US as a way of challenging the validity of an issued patent in administrative proceedings before the US Patent and Trademark Office (USPTO). In an effort to find additional means to invalidate patents under dispute, defendants have begun using inter partes review as a tool in patent infringement disputes. A defendant may however only file a petition for inter partes review during a time window of one year after the defendant has been served with a complaint alleging infringement of the patent. This time limitation is one reason why defendants have been turning to the patent risk management firms for assistance, another being the circumvention of the potential estoppel in future disputes that material from the inter partes proceedings may generate.

Consumer electronics corporation Apple has an ongoing patent dispute with the patent assertion entity Virntex concerning security solutions in the communication application FaceTime™. RPX Corporation is a patent risk management firm, with Apple among its clients. In a recent decision**, the USPTO denied RPX Corporation an inter partes review of some of Virntex patents which are part of the dispute with Apple. The denial was based on the ground that Apple is a client of RPX Corporation and, according to the decision, provided funds and instructions to RPX. The USPTO contends that the relationship between Apple and RPX Corporation makes Apple the “real party in interest”, even though RPX argues that it is operating entirely on its own.

The decision makes it clear that one of the requirements for inter parties review, that the petition must list all “real parties in interest”, will be scrutinized by the USPTO and that the use of patent risk management firms or the formation of consortia does not provide sufficient distance for the clients or members to remain anonymous.

One could argue that transparency in patent disputes always is of benefit to the credibility of the system, however, I would argue that sometimes the possibility or remaining anonymous makes it possible to separate the question of whether or not a patent is valid, from sensitive business relations. Ultimately, the quality of issued patents must be the fundamental idea behind systems like inter partes review.

Joacim Lydén, European Patent Attorney

* As of September 16, 2012, with the implementation of the Leahy-Smith America Invents Act, any third party may file a petition for inter partes review provided that the reason for the petition is that the claimed matter is anticipated or obvious in light of prior art in the form of patents or printed publications 35 USC §§ 311 – 319.

** RPX CORPORATION v. VIRNETX Before the patent trial and appeal board, Paper 49, June 5, 2014