First experiences with the new system on June 1, 2024
June 1, 2024 marks the anniversary of the UPCA coming into force. Since then, around 26,000 European patents with unitary effect have been granted, which corresponds to around a quarter of all granted European patents. Austria is even above this average, as around 45% of all newly registered European patents have been converted into unitary patents.
We are still in the transition phase, in which a European Patent can be validated in individually selected states of the EPC as before. The resulting bundle of national patents can optionally also come under the jurisdiction of the Unified Patent Court (UPC).
The Unified Patent Court has also commenced its work at all locations. Up to now, a total of over 300 litigation proceedings have been initiated (including counterclaims following an infringement action). At the local chamber in Vienna, the first case has been concluded, while a second case is still pending. Although the first decisions of the UPC chambers are available, it is still too early to make a statement about the consistency or tendency of the Unified Patent Court. However, due to the short duration of proceedings of around 12 months for the first instance, numerous decisions and informative findings are expected in the coming year.
As far as is possible at this early stage, it is clear that the new system is being used and positively received. In practice, however, communication with the Unified Patent Court via its CMS (Central Management System) platform has proved to be bumpy. The UPC is planning improvements in this area.
The fact that further states will join the UPCA in the foreseeable future also speaks for the establishment of the unitary patent. In addition to the first states (Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Austria, Portugal, Slovenia and Sweden), Romania will probably join the system next, bringing the total number of participating EU states to 18. This would come as something of a surprise, as Ireland was initially expected to join. Ireland's hesitation is not a rejection of the system, but has formal reasons. It's accession will take place at a later date.
Increased fees and new fee reductions possible
For the first time, the European Patent Office is introducing fee reductions for natural persons, micro-entrepreneurs, non-profit organisations, universities and public research institutions - provided that they have not filed more than four applications with the European Patent Office in the last five years. The fee reduction can be applied for from 1 April 2024.
At the same time, an amended schedule of fees will become effective. While the application fee remains unchanged, the other procedural fees in the granting procedure have been increased by approx. 4 %. The opposition fee and the appeal fee remain unchanged.
The annual fees for the 3rd, 4th and 5th patent year were increased significantly. The annual fee for the 3rd patent year and the 5th patent year has been increased by approx. 8%. In future, the annual fee for the 4th patent year will be EUR 845 instead of EUR 660.
Overall, the costs for the European grant procedure will therefore increase by approx. 8%.
The newly introduced fee reduction amounts to 30% of the respective fee according to the fee schedule. Overall, the issuing procedure will therefore be even cheaper for the eligible groups of persons.
The complete table of fees can be found here on the website of the European Patent office.
Patents, trade marks and registered designs of an industry leader
The industry leader in the world of clamping bricks, Lego, also took action in Vienna at the end of 2023 to enforce its intellectual property rights for toys. The principle of pegs and studs, which is still used in Lego® building blocks today, is no longer protected by patent law. Lego's patent protection by, e.g., Austrian patent on clamping bricks – AT 211715B – ended 1978. Since then, Lego has defended its product range against imitators with patents on specific details of new building blocks and via trade mark law, which primarily protects the Lego man, e.g., with the EU trade mark UM 000050450.
As there are now numerous alternative suppliers of toys or modelling with clamping bricks, the Danish manufacturer is increasingly relying on the protection of individual new component shapes through the registered design, e.g., the 18-part collective design UM 007537964. This also gives Lego a practical tool for stopping entire consignments of imported goods at the customs of an EU member state. A patent on the clamping module itself is not required in this scheme.
In this way, Lego can require the importer to painstakingly pick out less critical components from the packaging of the confiscated kits from alternative manufacturers, some of which contain several hundred or thousands of non-critical parts – or to agree to the destruction of the entire consignment.
This is exactly what happened to a retailer in Vienna's 20th district in preparation for his Christmas shop. The severe economic impact desired by Lego had the desired severe economic impact, which was echoed by bloggers and newspapers (see Falter No. 49/2023, p. 42).
Clarification on the issue of transfer of priority rights
In its decision G 1/22, the Enlarged Board of Appeal of the European Patent Office made significant clarifications on the question of the transfer of priority rights.
In the simplest case, the effects of a priority right can be described as follows: An applicant files a patent application in one country (e.g. the USA). Within 12 months, he also files a patent application with the European Patent Office in order to have his invention protected in Europe as well. Under certain circumstances, he is entitled to the priority right of his first application, i.e. harmful publications are measured against the prior art of his first application. Publications made in the meantime, whether by the applicant himself or by a third party, are irrelevant for the patentability of the European patent application.
If the applicant does not wish to file his patent application with the European Patent Office himself but wishes to transfer this right to a third party, he must expressly transfer the priority right to this third party, even according to previous case law. This transfer must take place before the application is filed with the European Patent Office.
The question of the form in which such a transfer of priority rights should take place and which law should be applied to such a transfer has been disputed in case law to date. In its decision, the Enlarged Board of Appeal initially stated that the European Patent Office assesses the transfer according to its own law (autonomously), i.e. it does not depend on the law of the respective country, rather the same requirements apply to all European applications and patents.
The Board also noted that the legality of the transfer of priority rights was sometimes questioned, particularly in opposition proceedings, and that the patent proprietors were forced to prove the transfer of the priority right. With the present decision, however, the Board also clarifies that, in particular, it is not necessary for priority rights to be transferred in writing; rather, it is possible for the transfer of priority rights to be transferred under the lowest standards and under all circumstances, in particular also informally and also tacitly.
Even if attacks on the validity of the priority right remain possible and can also be brought forward by third parties who are completely uninvolved in the application itself, the possibilities for contestation are limited. The Board assumes that the fact that the priority right is claimed and the associated need to submit proof of priority precludes an application by completely unauthorised parties. There is therefore a presumption - albeit a rebuttable one - that the applicant was also authorised to claim the right of priority.
In greater detail, the European Patent Office dealt with the situation where two applicants first file a national application and then claim their right of priority in the context of an international application. In the present case constellation, however, the two applicants do not act as joint applicants for all contracting states, but divide the contracting states among themselves, i.e. the European part belongs to only one of the two applicants.
From a strict point of view, in the case of two applicants, an application is only entitled to the right of priority jointly for both applicants, so that in the present case the applicant of the European part would not be sufficiently entitled to claim the right of priority.
The Enlarged Board of Appeal generally does not share this view, but assumes that the two applicants, if they file
the application jointly, also implicitly grant each other a right of priority for the respective countries. Thus, if the co-filers of the first application claim their right of priority in a joint declaration, this right of priority is usually also granted to the indicated subsequent applicants, even if they are not named as co-filers for the European patent.
In the opinion of the Board, such an implicit transfer should only be rejected in cases where an international application was filed in bad faith without the will of a co-applicant who was bypassed. However, such proof of the non-existence of the priority right will generally only be possible for the co-applicant, but not for any third party.
On 1 June 2023, the UPCA enters into force and the UPC begins its work.
On 1 June 2023, the Unified Patent Court Agreement (UPCA) will enter into force. This will be a historic date as it represents a far-reaching change in international patent law and will lead to a unified jurisdiction for some of the bundle patents that have arisen from European patents.
After a long preparatory phase, the legal framework was created under which it is now possible to convert a European patent into a patent with unitary effect (often referred to as a “unitary patent” for short), which would currently be valid in 17 EU Member States, namely, in addition to Austria, in:
Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden.
Unitary patents fall under the jurisdiction of the Unified Patent Court (UPC), a transnational court that also had to be newly created and will begin its work on 1 June.
During a transitional period of seven years, European patents can still be validated separately in all EPC member states as before. But beware: the UPC will still be responsible for existing and future classical bundle patents instead of the national courts if they have not been actively opted out.
The Unitary Patent is not yet a Community patent of the EU, as it is not yet valid in all 27 EU member states. Nevertheless, a major step towards standardisation has been taken. It is to be expected that further EU member states will join in the coming years and make the Unitary Patent more attractive. The coming years will also be exciting because it is currently impossible to assess how the UPC's decisions will compare with national and international practice. However, it is clear that everyone who is economically active in the territory of the EU will come into contact with the Unitary Patent and the UPC.
Dr. Tobias Fox joins the law firm
We are very pleased to welcome patent attorney Dr. Tobias Fox as reinforcement in our firm. Dr. Tobias Fox brings with him many years of professional experience as an Austrian and European patent attorney and will complement our team in all matters relating to physics, electrical engineering and mechanical engineering.
We are looking forward to our cooperation! This is the default text field.
Congratulations on passing the exam.
We are very pleased to welcome Dipl.-Ing. Anatol Dietl to the list of Austrian patent attorneys and thus as a new patent attorney in our round: Dipl.-Ing. Anatol Dietl has recently successfully passed the Austrian Patent Attorney Examination, is registered in the list of Austrian Patent Attorneys and thus complements and expands our team.
With the BREXIT there are important changes and to-dos with regard to EU trademarks and Community designs
As of 31.01.2020, Great Britain has left the EU, whereby a transitional period until 31.12.2020 was agreed in the Withdrawal Agreement. For EU trademarks and Community designs, the UK's withdrawal from the EU has far-reaching consequences: as of 01.01.2021, EU trademarks and Community designs are NOT valid in the UK and can also no longer be directly asserted as an exclusive right in the UK. However, provisions have been made in the Withdrawal Agreement to protect the rights of the owners of EU trademarks and Community designs. These are outlined very briefly below:
1. already registered EU trademarks and Community designs.
For already registered EU trademarks, EU designations of International Trademarks and Community Designs, national UK "clones", so-called "comparable UK trademarks/designs", are created in the UK Register. The timelines (priorities, seniorities) and register statuses of EU IP law are maintained. There are no official fees for this.
This is automatic, and UK protection is preserved - active action is NOT required.
However, this creates separate, independent UK trademarks/patterns which would subsequently need to be renewed/renewed separately, kept on record and for which a local UK representative should be appointed, etc. Therefore, each owner should consider whether to pursue the trademark/design in the UK.
2. pending EU trademark and Community design applications
Union trademark and Community design applications that are not yet registered, e.g. Union trademark applications still caught in opposition, are NOT automatically transferred to the UK national register. Here, there is a time limit of 9 months from 01/01/2021 within which a national UK trademark or design application can be "diverted" for the EU trademark and Community design application.
These "diverted" trademark and design applications are then continued as national UK applications in the UK and are treated by the UK IPO as direct national IP applications, i.e. examined and registered if necessary. The timelines (priorities, seniorities) of EU IP law will be maintained. The costs and fees for this will be approximately in the range of the costs for a national GB application.
So in these cases, active steps will need to be taken by 30/09/2021 to obtain protection in the UK as well.
Therefore, every owner should consider whether to pursue the trademark/design application in the UK and take steps in time.
3. special aspects
No "UK registration certificates" are issued for the new UK rights, these rights are only visible in the register database of the UK-IPO.
Use in GB: The national UK trademark must - like any other national trademark - be used in the UK in the future, because after 5 years of non-use it would become ripe for cancellation and could be cancelled upon request of a third party. However, use in the EU up to 31.12.2020 will be taken into account.
License agreements and delimitation agreements concerning EU trademarks and Community designs should be checked whether an automatic extension to the UK results from the contract or whether supplements are necessary.
Special regulations exist, for example, for renewals, transfers, license registrations, pending court or official proceedings, conversions or reinstatements.
We will be happy to advise and assist you in all the above-mentioned aspects concerning the effects of BREXIT on your EU trademarks and Community designs.
Decisive setback for the unitary patent?
The efforts of the UPC Agreement to create a European patent with unitary effect in all EU states has suffered another serious setback. Whereas a few months ago it was the British government's announcement that it would withdraw from the UPC Agreement project altogether, now the German Federal Constitutional Court has declared the German Consent Act unconstitutional and thus null and void. The Federal Constitutional Court upheld the complaint, which had already been pending since 2017, to the extent that the Consent Act had not been passed with the required number of members of the Bundestag.
Although the German Federal Government expressed in an initial reaction that it is still keen to implement the UPC Agreement in Germany, i.e. to have the vote repeated in the Bundestag, the political landscape has changed in the last three years: The pro-UPC momentum that existed quite a few years ago has been lost and petered out by the UK's EU exit and the three-year delay by the BVerfG, and most importantly, priorities have shifted considerably, not least due to the Corona pandemic.
Thus, even if the UPC ratification effort were to be revived in Germany after all, it would be questionable whether a sufficient two-thirds majority in the Bundestag (if a quorum were met) would even be achieved. And if it did, there would still be the overriding issues around the absence of the UK as a mandatory member, and the relocation of the Central Chamber's department from London to another country to resolve. This would likely lead to further discussions - and presumably rehashing of discussions already held - among member states, which could be lengthy and difficult in the current atmosphere, which tends to be one of nationalism.
This decision will thus at least significantly delay the project of the unitary European patent, if not put it on hold altogether.
Deadlines Austria
The 4th COVID-19 law has passed the Bundesrat on 04.04.2020 and is expected to enter into force on 06.04.2020.
1. "moratorium on time limits" of the 2nd COVID-19 Act does not include time limits in proceedings before the Patent Office
Under the 2nd COVID-19 Act (Federal Law Gazette I. No. 16/2020), which entered into force on 22.03.2020, the 1st COVID-19-Justice Accompanying Act (1st COVID-19-JuBG) and the COVID-19-Administrative Accompanying Act (COVID-19-VwBG) were enacted, among others, ordering that, due to the effects of the restrictions on public life resulting from the current "Corona crisis"
all procedural deadlines in judicial proceedings, and
all time limits in pending administrative proceedings to which the General Administrative Procedure Act (AVG), the Administrative Penal Act (VStG) or the Administrative Enforcement Act (VVG) apply,
are interrupted until 30.04.2020, if the respective deadline has not yet expired on 22.03.2020 or is triggered after 22.03.2020.
However, the statutory "moratorium on time limits" thus granted did not cover time limits in proceedings before the Austrian Patent Office in patent, utility model, protection certificate, trademark, design and semiconductor protection matters as well as in plant variety protection matters.
The general interruption of time limits ordered under the 1st COVID-19-JuBG did not apply because patent office proceedings are not "judicial proceedings" but proceedings before an administrative authority. However, since - by virtue of an express statutory provision (Art I (3) (1a) EGVG) - the administrative procedural laws are not applicable to these proceedings, the applicability of the "moratorium on time limits" regulated by the COVID-19-VwBG was also not relevant.
2. "moratorium on time limits" of the 4th COVID-19 Act
This gap has now been closed by the "Federal Act Concerning Accompanying Measures to COVID-19 in the Field of Industrial Property Protection" (COVID-19-GewRS-BG), which was enacted as part of the 4th COVID-19 Act. With this law, the continuation of all statutory procedural and substantive deadlines under the Patent Act was suspended, in particular also the deadlines for
the filing of an opposition under Sec. 102 (1) Patent Act,
the filing of an opposition under Sec. 29a (1) MSchG,
the filing of a petition for revocation under Sec. 49 (3) Patent Law,
claiming priority under Sec. 93a f PatG or Sec. 24 (2) MSchG, respectively
to divide a patent application
for the submission of a German translation of a European patent, and
for a branching of a utility model application.
As a result of the statutory suspension, the period between 16.03.2020 and 30.04.2020 is not taken into account for the deadlines covered by the COVID-19-GewRS-BG. I.e., a deadline whose expiration would fall within this period is retroactively stopped as of 03/16/2020 and does not continue to run until 04/30/2020.
Not affected by this regulation are the official time limits, i.e. those time limits which may be set by the patent office itself according to free or bound discretion (see below), the appeal time limits, for which a separate time limit regime applies (see below), as well as time limits which are regulated by EU law (such as the six-month time limit for filing a protection certificate according to Art 7 (2) SZ-VO).
It is also noteworthy that the deadlines for the payment of fees under the Patent Office Fees Act (PAG), in particular the six-month grace periods for the payment of renewal and renewal fees, are not covered by the COVID-19 GewRS-BG. This means: For annuity payments for patents or utility models as well as renewal fee payments for trademarks or designs, there are no changes in the Corona crisis.
3. measures of the patent office
With regard to time limits that the Austrian Patent Office itself may set freely or at its bound discretion, the Office has established a regulation by way of ordinance. The Patent Office COVID-19 Ordinance of 26.03.2020 (PBl 2020/S1) stipulates that all official time limits,
whose term begins after 16.03.2020, or
which expire in the period between 16.03.2020 and 30.04.2020,
shall be interrupted and shall begin to run anew as of 01.05.2020.
Information of the Austrian Patent Office
The Patent Office COVID-19 regulation, which temporarily takes precedence over the PAV, mainly concerns
Time limits set for responding to notices or objections, and
Time limits for filing a rebuttal in opposition, appeal, nullity, and cancellation proceedings.
4. time limits for appeals against decisions of the Patent Office
Proceedings on appeals against decisions of the Austrian Patent Office are governed by the provisions of the AußStrG and the ZPO, respectively, are conducted before ordinary courts (OLG Vienna and OGH), and thus qualify as "judicial proceedings" in the sense of the 1st COVID-19-JuBG. Time limits for appeals, recourses and revisions pursuant to Sec. 138 et seq. Patent Act (or the provisions in the Trademark Act, Utility Model Act or Design Protection Act referring thereto) which have not yet expired on March 22, 2020 or which are triggered (or have already been triggered) after March 22, 2020 shall therefore be interrupted until the expiry of April 30, 2020 and shall start to run anew as of May 1, 2020.
5. no physical submission of documents to the Patent Office
As of 27.03.2020, the Receiving Section of the Patent Office no longer accepts documents submitted in person, as announced on the homepage of the Patent Office. The Receiving Section is closed for party traffic, and submissions can no longer be deposited in drop boxes. Submissions by mail are possible, but are currently not processed. Electronic submissions will be accepted and processed.
Michael Stadler / Alexander Koller
(updated 04.04.2020)
We are still at your disposal
In the course of the dramatic developments in connection with the spread of Covid-19 (Coronavirus), we would like to give you an update about the current situation and measures taken by us:
Besides a number of precautions taken during the past couple of weeks, the team of Wildhack & Jellinek uses the potential of Home Office for the safety of all employees and their families as well as to contribute to the containment of Coronavirus.
We are able to provide all of our services as usual and continue to assist you in any patent, trademark, design and further IP matters.
We remain at your disposal via telephone and e-mail at office(at)wildhack.at.
What does Brexit mean for owners of industrial property rights?
What does Brexit mean for IP rights holders?
Timetable
According to the current status, the United Kingdom will leave the European Union on January 31, 2020. Within a transitional period ending on December 31, 2020, special rules exist for individual IP rights to allow for continued legal protection and to avoid hardship for individual IP right holders.
European patents
The good news first: European patent applications and European patents are not affected by Brexit. The reason for this is that the treaty on which the European patent is based, the European Patent Convention, is not part of EU law as an international treaty and is consequently not affected by the UK's withdrawal from the EU. Moreover, there is no tendency in the UK to terminate this agreement either. On the contrary, in this policy area in particular, the British are strongly interested in even closer cooperation with the EU. However, whether an EU-wide patent will come into force in the future and whether the UK will participate in this project is not regulated in the withdrawal agreement.
For the owners of European patents that are valid in the UK, everything therefore remains the same. There is generally no need to react in a special way to the Brexit.
Protection certificates
For the holder of a protection certificate, no changes to the level of protection are to be expected either. In any case, the relevant Protection Certificate Regulations for medicinal products and plant protection products apply to all existing protection certificates.
If protection certificates have been filed with the UK Patent Office before the end of the transitional period, the previous rules for granting protection certificates will continue to apply to them as well. The same applies to applications for the extension of the term of protection certificates.
Thus, deviating regulations can only apply to those protection certificates which are filed after the end of the transitional period.
EU Register Rights (Union Trademarks, Community Designs, EU Plant Variety Rights)
With the UK's withdrawal from the European Union, the EU trademarks, Community designs and EU plant variety rights created by EU law will lose their effect in the UK.
The Withdrawal Agreement provides that national UK rights will automatically be created for all such IP rights that are or were registered before the end of the transitional period. This registration will take place without any review of the content and without any special application by the holder. The British Patent Office thus copies the IP rights of the EUIPO and the Plant Variety Office into its own registers and updates these IP rights nationally. In the process, all timelines, priorities and seniorities of the IP rights are also preserved.
For applications for EU trade marks and Community designs filed before the end of the transitional period and not yet in force on the transitional date, the applicant will no longer receive automatic protection in the UK; he must therefore act and file a new application under UK law within 9 months of the transitional date and complete a UK national application procedure. If an application is filed within the time limit, it retains its original seniority. There is an analogous rule for EU plant variety rights, with the difference that only a six-month period is granted from the transition date.
International trademarks and international designs that are valid in the EU until the end of the transition period are to continue to be effective in the UK thereafter. Exactly how this will be implemented, i.e. whether a separate (retroactive) designation of the UK or a national IP right will be created, has not yet been determined.
The immediately following renewal periods and protection durations of these IP rights will also remain unaffected, so that, for example, national UK trademarks that have come into existence on the basis of an EU trademark will continue to run until the same date as the EU trademark in question. When renewing, however, it must then be noted that a renewal must be submitted to the EUIPO on the one hand and to the British IPO on the other. However, further renewals are not explicitly regulated in the withdrawal agreement, so that the British practice on the further renewal of IP rights remains to be seen.
The unregistered Community design is also regulated separately: if such a design has become effective by publication in the EU before the end of the transitional period, it will continue to be valid in the UK without further ado after the end of the transitional period. The term of three years as well as the level of protection of this protection right remains unaffected in Great Britain.
Community-wide exhaustion
If a product is placed on the market within the EEA by the IP right holder or with his consent, the IP right holder can no longer take action against persons who use the items placed on the market in this way. The Withdrawal Agreement now stipulates that items placed on the market in the EEA before the end of the transitional period will continue to be deemed exhausted in both the EU and the UK and may be freely used without the IP right holder's consent.
After the end of the transitional period, exhaustion is no longer expressly provided for. This means that products placed on the market in the UK by the owner or with the owner's consent may infringe the owner's property rights in the EU - and vice versa.
Commentary on patent law was published at the beginning of July 2019
After more than two years of development, it is done: Together with a team of more than 30 authors, the editors Michael Stadler and Alexander Koller were able to complete their commentary project on Austrian patent law. The commentary covers on 1700 pages the essential topics of patent law with special regard to the national Austrian legal situation.
The focus of the work, which was treated by experienced practitioners from the patent and legal profession, is on the perennial issues of patent law, such as patentability, enforcement and service inventor law. In addition, a large number of experts from practice and industry have been recruited to deal with cross-sectional issues of patent law.
Legislative amendments to the Patent Attorneys Act pass the National Council
On May 23, 2019, an amendment to the Patent Attorneys Act came into force (BGBl 39/2019). The core of the amendment was a substantial further development of the patent attorney profession in legal terms. Whereas the basic legal training was ensured solely by practical employment with a training patent attorney, now - following a European trend - a standardized training level at university level is additionally prescribed. In return, the practical training has been shortened to four years.
In order to register as a patent attorney, it will be necessary in the future to complete 60 EC of legal studies. These studies must be completed in particular in the core legal subjects required for patent attorneys: private law, constitutional and administrative law, European law, corporate law and civil procedure law.
The technical-scientific university education required for admission to practice was also defined in more detail by specifying the extent of the study achievements. Thus, the previous criterion of five years of studies was prescribed by the requirement of completion of technical-scientific studies at master's or doctoral level to the extent of 270 EC, of which 210 EC can necessarily be completed in a technical-scientific core subject.
In the course of the amendment, the registration system for the patent attorney examination was also reorganized, clarifications were made regarding the examination material, and it was ensured that the additional legal training is also taken into account in the patent attorney examination.
Furthermore, the present amendment also created the possibility of practicing the patent attorney profession within the framework of a GmbH & Co KG, as was already possible for attorneys-at-law in the past.
The Enlarged Board of Appeal of the European Patent Office was presented with the question of the patentability of inventions made in a...
The Enlarged Board of Appeal of the European Patent Office was presented with the question of the patentability of inventions consisting of a computer simulation or where the computer simulation is part of a design process.
The questions referred originate from an application procedure in which the applicant directed protection to a computer-implemented method for modeling and simulating pedestrian behavior. The individual steps of the process refer exclusively to features that were conditioned by the simulation of a real event; a concrete intervention in the outside world, for example in the form of a prediction based on measurement data or a control of the environment of the pedestrians, was not involved.
The essential peculiarity of inventions related to computer simulation (by itself) is that the relation to the actual physical world outside the simulation environment is very small. Specifically, it is precisely the task of simulation to recreate processes in a computer that are going on in the real world.
Technical effects of a computer simulation can lie in different aspects of the invention:
On the one hand, technical effects may be present with respect to the computer used to run the simulation. Accordingly, simulation methods can be considered technical and amenable to patent protection if the invention takes into account the technical conditions in the computer executing the simulation.
On the other hand, technical effects can also be affirmed with respect to the circumstances if they improve the simulation. Thus, the applicant also argued in the present case that a more accurate and realistic simulation of the behavior of pedestrians was possible by means of the claimed simulation.
The Enlarged Board of Appeal of the European Patent Office was presented with the question of the patentability of inventions consisting of a computer simulation or where the computer simulation is part of a design process.
The questions referred originate from an application procedure in which the applicant directed protection to a computer-implemented method for modeling and simulating pedestrian behavior. The individual steps of the process refer exclusively to features that were conditioned by the simulation of a real event; a concrete intervention in the outside world, for example in the form of a prediction based on measurement data or a control of the environment of the pedestrians, was not involved.
The essential peculiarity of inventions related to computer simulation (by itself) is that the relation to the actual physical world outside the simulation environment is very small. Specifically, it is precisely the task of simulation to recreate processes in a computer that are going on in the real world.
Technical effects of a computer simulation can lie in different aspects of the invention:
On the one hand, technical effects may be present with respect to the computer used to run the simulation. Accordingly, simulation methods can be considered technical and amenable to patent protection if the invention takes into account the technical conditions in the computer executing the simulation.
On the other hand, technical effects can also be affirmed with respect to the circumstances if they improve the simulation. Thus, the applicant also argued in the present case that a more accurate and realistic simulation of the behavior of pedestrians was possible by means of the claimed simulation.
In contrast, another part of the jurisprudence, which has prevailed in particular in the field of electrical circuit simulation, is of the opinion that a technical effect can certainly be seen in a realistic prediction about the functioning of a circuit, even if the simulation itself is not involved in a real circuit event at any time. It is argued in this context that this type of simulation makes it possible to check a large number of circuit designs in a simple manner.
The referring board took a preliminary negative view on the patentability of the present invention; in particular, it is of the opinion that such a computer simulation is inherent in modern engineering and thus falls within the engineer's (technical) field of activity, but regardless of this, it is a mere mental aid in the implementation of the task.
In the event that the Enlarged Board of Appeal affirms the technicality of simulation methods in principle, the second question referred is directed to the concrete criteria for assessing technicality in individual cases. It is to be hoped that the Enlarged Board of Appeal will provide an unambiguous and practicable solution for assessing the patentability of computer-implemented simulation methods in the event that technicity is affirmed in principle.
Pending a decision on the question referred, it is recommended to claim the simulation method itself when applying for inventions that also involve a computer simulation.
Furthermore, for safety, additional methods (idR as dependent patent claims) could be claimed that use the simulation either to process measurement data (e.g., related to pedestrian simulation to predict a possible mass panic) or to predictively control actuators (such as doors or locks to direct the flow of pedestrians). In any case, in the present view of the referring board, such methods present themselves as technical and may serve as fallback positions in the event that the Enlarged Board of Appeal finds the patent claims in the general version to be ineligible.
Finally, depending on the answer to the third question referred, patent claims directed to a design process using the simulation method, for example, for the creation of structures using computer simulation, could be allowable.
Austria's most comprehensive patent law commentary
In less than two years, patent attorney Michael Stadler as editor, together with Alexander Koller as co-editor and a team of more than 30 authors, has produced a commentary on the Patent Act, Utility Model Act and Patent Treaties Implementation Act published by Linde-Verlag.
This is the most comprehensive presentation of Austrian patent law to date, covering core areas of patent law such as patent infringement and patentability as well as current problems in secondary areas of patent law.
Click here to visit the publisher's website.
The Supreme Court confirms the cancellation of a trademark for Styrian pumpkin seed oil due to lack of use.
The Supreme Court has upheld a decision cancelling an Austrian word and figurative trademark registered for Styrian pumpkin seed oil due to lack of use. The trademark owner was a Chamber of Agriculture, which had granted a license to the registered mark in return for compliance with certain standards in production. It was undisputed that the trademark owner itself was not a producer of pumpkin seed oil.
Decisive for the assessment of the lack of use was ultimately the question whether the public (idR the customers) sees in the contested individual mark an indication of a very specific company which alone determines the production conditions and which itself could be held responsible for the quality of the goods. However, it was not sufficient for the Supreme Court if the public sees in the trademark a seal of quality, in which recognizably everyone can participate, as long as he fulfills the product characteristics guaranteed by the seal of quality.
The Supreme Court thus followed the decision C-689/15 Gözze, which also held that it is precisely not sufficient for trademark use that the trademark owner merely determines individual framework conditions of production, but relinquishes control over production to such an extent that the consumer no longer sees the goods as the product of a unified production process, but rather the trademark as a subsequent distinction of a product manufactured - by whatever means.
For constellations in which the trademark owner merely monitors compliance with a certain quality of externally produced goods and services, but does not coordinate the production process itself, it has also been possible since 2017 to file a warranty trademark instead of an individual trademark.