R E P O R T S O N R E C E N T D E V E L O P M E N T S I N I N T E L L E C T U A L P R O P E R T Y L A W #1 2 012
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Content s:
Functional features at the EPO, the USPTO and the SIPO
2
Seniority – a good idea or not? 4
Court of Justice of the EU rules on the scope of protection conferred by an SPC
5
First decision on Community Design from the Court of Justice of the European Union
6
Getting personal in Sweden:
Liability of directors, officers, and owners for their company’s IP infringement 7
The importance of a party’s procedural right to be heard and fully present its case
in proceedings before the EPO
10
Third-party observations before the EPO – useful tool or useless parenthesis?
11
Editorial Board: Niklas Mattsson, Peter Kenamets, Mattias Pierrou, Sidsel Hauge and Magnus Hallin
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Functional features at the EPO, the USPTO and the SIPO
The patent laws or regulations of most countries
recognize that there may be situations where an
invention is most appropriately defined using one or
more functional features, i.e. features defined in
terms of a function carried out or effects achieved.
Although it is generally accepted that functional
features are sometimes proper to use, the treatment
and interpretation of a claim with functional features
varies between different patent offices and jurisdictions. This is addressed, for example, in the “Catalogue of Differing Practices”1 recently released by the
Trilateral Patent Offices (EPO, USPTO and JPO). This
guide lists and categorizes differences in the practices of the Trilateral Patent Offices, SIPO and KIPO.
We have here chosen to focus on certain interesting
differences in the treatment of functional features
among three of these offices (EPO, SIPO, USPTO).
EPO
The EPC stipulates that the claims should define the
matter for which protection is sought in terms of
technical features.2 Regarding functional features,
the Guidelines for Examination in the EPO specifically state that “functional features may be included in a claim provided that the skilled person would
have no difficulty in providing some means of
performing this function without exercising inventive skill”.3
The most common objections that may arise against
a claim comprising functional features are that the
claim is not clear, or that the claim is not supported
by the description.4
As for support in the description, the EPO applies a
relatively lenient approach, according to which a
functional feature may be considered supported by
the description based on a single example or embodiment, provided it can be assumed that the
skilled person would realize that other means could
be used for achieving the same function.5
In practice before the EPO, one class of functional
features is treated separately, viz. features that are
claimed “in terms of a result to be achieved”. It is
recognized that there are cases when this type of
claim formulation is acceptable.6 The criteria are
basically that it should not be possible to formulate
the claim more precisely without “unduly restricting
the scope”, and that it should be possible for the
skilled person to verify the result without undue
burden. To satisfy the latter criterion, the application
should, if necessary, describe how to determine
whether the result has been achieved.
USPTO
The United States Patent Act allows claim elements
expressed as means for performing a specified
function.7 Such claims are construed to cover the
corresponding structure described in the specification and equivalents thereof. If no adequate disclosure of such a structure can be found in the description, the applicant has in effect failed to point out
and distinctively claim the invention.
According to the Manual of Patent Examining Procedure (MPEP 2181), there is a strong presumption that
the statutes relating to means-plus-function only
apply when the word “means” is used. Thus, when
the phrase “means for” or “step for” is used, and is
modified by functional language, a claim is presumed
to invoke 35 U.S.C. 112. In particular, the use of the
words “means for” in a claim is interpreted as if the
term were used intentionally to invoke the statutory
mandates for means-plus-function claims.
However, case law is somewhat ambiguous, and a
claim may be treated as a “means-plus-function”
claim even if the words “means for” are not used. For
example, if a feature is defined as a function that has
to be performed without reciting sufficient structure.
As an example, a claim containing the phrases “lever
moving element for moving the lever” and “movable
link member for holding the lever ... and for releasing
the lever” was construed as a means-plus-function
claim since the claimed limitations were described in
terms of their function, not their mechanical structure.8 In contrast, the phrase “second baffle means”
was considered not to invoke means-plus-function
limitations because the word “baffle” itself imparts
structure and because the claim further recites the
structure of the baffle.9
SIPO
The interpretation of the Chinese Patent Law in
respect of examination and invalidation of patents is
provided by the Guidelines for Examination. Regarding functional features, the Guidelines establish a
considerably more restrictive approach to functional features than that of the EPO and the USPTO.10
According to the Guidelines, functional features
should be avoided as far as possible, but may be
permissible when structural features are not appropriate. Furthermore, the Examiners at the SIPO
frequently object to functional features as lacking
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support in the description and require that the claim
be limited to means described in the description.
Such objections may be based on the argument that
the skilled person “can reasonably doubt that one or
more means embraced in the definition by function
[can] solve the technical problem”. This is different
from the approach of the EPO outlined above.
As for the interpretation of functional features, a
judicial interpretation relatively recently published by
the Supreme People’s Court has introduced an
asymmetry in the interpretation of functional features in examination and invalidation proceedings on
the one hand, and infringement proceedings on the
other hand.11
http://www.trilateral.net/catalogue.html
1
SR. 43(1) EPC
2
GL C-III, 2.1
3
Since these objections are not grounds for opposition,
similar objections would typically be raised in opposition
on the ground that the invention – as defined by the claim
comprising the functional feature – is not sufficiently disclosed. See for example Case Law of the Boards of Appeal of
the EPO, II.A.6
4
GL C-III, 6.5
5
GL C-III, 4.10 and T 68/85
6
35 U.S.C. 112, sixth paragraph
7
Mas-Hamilton Group v. LaGard Inc., 156 F.3d 1206, 1213,
48 USPQ2d 1010, 1016 (Fed. Cir. 1998)
8
Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 54
USPQ2d 1449 (Fed. Cir. 2000)
9
The Guidelines clearly state that a technical feature
defined by function shall be construed as embracing
all the means capable of performing the function.12
Concerning infringement proceedings, the abovementioned judicial interpretation states that the
scope of a functional feature should be interpreted
based on specific embodiments of the description
and equivalents thereof, i.e. equivalent to the interpretation of means-plus-function claims in the US.
GL II-2, 3.2.1
10
The Judicial Interpretation was published on 21 December
2009 and entered into force on 1 January 2010.
11
GL II-2, 3.2.1
12
This asymmetry clearly adversely affects the patent
holder, since a claim containing functional features
could potentially be invalidated using prior art which
would fall outside the scope of the claim in infringement proceedings.
Bottom line
If an application is intended for Europe, the United
States and China, functional features should only be
used where deemed necessary/beneficial, but with
caution! In order to avoid invoking the means-plusfunction statute in the United States, the word
“means” should be used with caution. For the
benefit of both the United States and China, the
description should include numerous examples of
structures that are capable of performing the
claimed function or effect. 
Reported by
Daniel Fritsche and Johan Piscator,
Gothenburg office
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Seniority – a good idea or not?
By claiming, for a Community Trade Mark (CTM),
the seniority of an earlier trade mark registered in a
Member State (“the earlier mark”), the proprietor
of the CTM continues to have the same rights as he
would have had if the earlier trade mark had been
kept in force (Article 34, Community Trade Mark
Regulation, CTMR).
However, and contrary to what is suggested by the
wording of Article 34 (2), the seniority “route” does
not seem to give the proprietor of the CTM the
same rights as he would have had if the earlier
trade mark had been kept in force. This will be
described in more detail below with reference to
two aspects, namely an earlier trade mark having a
reputation and the genuine use of a mark.
Regarding an earlier trade mark having a reputation, the owner of such a mark must be aware that
if he chooses to maintain the CTM only, and if the
earlier mark is allowed to lapse, the trade mark may
no longer be considered to have a reputation. The
CTMR requires trade marks to have reputation “in
the Community”, terminology that the ECJ discussed in case C-301/07 (PAGO). The Court held
that “[t]erritorially, the condition as to reputation
must be considered to be fulfilled when the Community trade mark has a reputation in a substantial
part of the territory of the Community” (para 27),
and that “the territory of the Member State in
question may be considered to constitute a substantial part of the territory of the Community”
(para 30).
Legal commentators have interpreted the decision
to mean that use in only one member state may be
considered genuine, at least as long as the state is
of the same size as Austria (this particular case was
about the Austrian trademark, PAGO). Before more
guidance is given, owners of trade marks having a
reputation nationally should consider whether the
trade mark also has a reputation from a Community
point of view, before surrendering the earlier mark.
mission, use which is genuine within the meaning
of Article 15 in one (1) country constitutes genuine
use “in the Community”, an opinion applied by the
OHIM (Manual Concerning Opposition on Proof of
Use, at 14).
However, the Benelux IP Office held in its decision
on January 15, 2010 (ONEL case) that it is not
enough for a trade mark “per definition” to be used
in only one member state for it to be considered to
be used “in the Community”. The decision was
appealed and the Appeal Court of the Hague has
asked the ECJ if use of a trademark in one member
state is enough for the requirement “in the Community” to be fulfilled. A ruling by the ECJ is expected shortly.
In its “Study on the Overall Functioning of the
European Trade Mark System”, published on 8
March 2011, the Max Planck Institute for Intellectual Property, Competition and Tax Law has suggested that, when assessing genuine use, too much
focus on territorial boundaries would be inappropriate in view of the “single market” concept. Instead,
the assessment should be made on a case-by-case
basis, where the territory in which the mark is used
is only one of many criteria to consider (see 135f
and 139). It will be interesting to see whether the
ECJ will confirm the current practice, included in
the Joint Statements by the Council and the Commission, or follow the ideas of the Max Planck
Institute. 
This article was previously published in AIPPI e-News.
Turning now to the aspect of the genuine use of a
mark, trade mark owners should ensure that genuine use of the mark takes place in more than one EU
member state, before letting an earlier mark lapse.
As is generally well known, a national trade mark,
according to the Harmonization Directive
(2008/95/EC), needs to be used within the relevant
member state, whereas a Community Trade Mark
must be used “in the Community”. According to
the Joint Statements by the Council and the Com-
Reported by
Bo Davidsson and Hanna Lundström,
Stockholm office
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Court of Justice of the EU rules on the scope of protection conferred by an SPC
On 9 February 2012, the Court of Justice of the
European Union (CJEU) issued its judgment in case
C-442/11 (Novartis v Actavis).
The CJEU comes to the conclusion that an SPC can
be enforced in the same manner as the basic
patent.
After this final ruling in a series of decisions relating
to the concept of a product being protected by a
basic patent – in the context of the SPC Regulation
EC 469/2009 – it is understandable to think that
there are no more questions to ask on this subject.
Incidentally, Article 5 was also used in Medeva
(C-322/10) Recital 25 as the basis for concluding
that only active ingredients specified in the wording of the claims could be eligible for SPC:
Following the decisions in the fall of 2011 in, for
example, Medeva/Georgetown (C-322/10 and
C-422/10), ruling that only “products” specified in
the wording of the claims are considered to be
protected by a basic patent in force for the purpose
of applying for an SPC, there has been speculation
about what then applies when enforcing SPCs.
It has been discussed whether a combination of
active ingredients that is not specified in the wording of the claims could be protected by an SPC for
one of the active ingredients in that combination,
since – following i.a. Medeva – the combination
would not be considered protected by the basic
patent in force at the time of applying for SPC. This
issue has now been resolved in a recent case.
In the case in question, Novartis brought an action
against Actavis before the High Court of England
and Wales for Actavis’ intended marketing of a
combination product comprising Valsartan and
hydrochlorothiazide, claiming that such marketing
would infringe the rights Novartis holds through its
SPC for Valsartan. Actavis, in turn, claimed that the
product protected by the SPC was not the combination, but only Valsartan alone.
“Moreover, it should be recalled that Article 5 of
Regulation EC 469/2009 provides that any SPC
confers the same rights as conferred by the basic
patent and is subject to the same limitations and
the same obligations. It follows that Article 3(a) of
the regulation precludes the grant of an SPC relating to active ingredients which are not specified in
the wording of the claims of the basic patent.”
It therefore appears that different criteria apply
when reading Article 5 when a product is protected by a basic patent in force, depending on whether this is during the application procedures (cf.
Medeva) or during infringement procedures (cf.
Novartis v Actavis).
While the latter decision is in line with established
worldwide patent enforcement practice, it is easy
to foresee how more questions may arise from the
initial decisions. 
The High Court referred the question to the CJEU,
which has now ordered in favour of Novartis that
the scope of an SPC for the single compound can
also be enforced against combination products, as
long as these comprise the single compound.
In Recital 20 of its ruling, the CJEU reasons as
follows:
“It should be noted in that regard that, in accordance with Article 5 of Regulation EC 469/2009, an
SPC granted in connection with such a product
confers, upon the expiry of the patent, the same
rights as were conferred by the basic patent in
relation to that product, within the limits of protection conferred by that patent as provided for in
Article 4.”
Reported by
Sidsel Hauge,
Copenhagen office
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First decision on Community Design from the
Court of Justice of the European Union
In the fall of 2011 the first decision on Community
Design was delivered by the Court of Justice of the
European Union – C-281/10. The decision is
interesting, not only because it is the first decision,
but also because it very much contributes to the
understanding of essential design legislation terms.
The conflict was between the design of PepsiCo
and that of Grupo Promer, classified as “promotional item(s) for games” and “metal plate(s) for games”
respectively.
Grupo Promer is the owner of an earlier Spanish
design as well as a Community Design, both of
which were used as basis for the invalidation
request. Apart from referring to these designs, the
request was also based on the lack of novelty and
individual character of the PepsiCo design.
Initially, the OHIM Invalidity Division concluded that
the PepsiCo design was invalid. This decision was
appealed and the Board of Appeal declared the
PepsiCo design valid. This second decision was also
appealed, and the OHIM General Court declared
the PepsiCo design invalid. Again, the decision was
appealed and the Court of Justice of the European
Union in its capacity as supreme authority upheld
the ruling that the PepsiCo design was invalid. The
Court referred to the Grupo Promer design as being
“first in time” and consequently preventing the registration of the PepsiCo design, which gave the
informed user the same overall impression.
One of the most essential terms in relation to
whether or not a Community Design is infringed is
“the informed user”. This term is not defined in
regulation no. 6/2002. Therefore, until now, the
interpretation has been based on pure guesswork.
This decision has made a substantial contribution to
an interpretation of the term. If the informed user
has a different overall impression of a design
compared to the first design, there is no infringement and vice versa. Consequently, it is important
that “the informed user” is defined.
In this case, the Court concluded that the informed
user had the same overall impression of the two
conflicting designs and that, consequently, there
was an infringement. During the proceedings, the
definition of the term “the informed user” was
discussed in great detail. The Court concluded that
the informed user is a person somewhere between
the average consumer and a specialist. In trademark terms, an average consumer is not expected
to have specific knowledge and does not perform a
direct comparison. A specialist is an expert with
detailed know-how. The Court thus establishes that the person to examine conflicting designs is different from the person
typically used in connection with trademark conflicts. Unlike the technical expert typically used in
patent conflicts, the informed user is merely a person
who is particularly observant, either based on his/her
own personal experience or on a comprehensive
knowledge of the industry in question. In this particular case, the Court established that the informed user
could be a child 5–10 years of age, or the marketing
director of a company manufacturing products
where the advertising offers so-called “rappers”. This
is interesting because the people who are to judge
the pictures will probably – to a certain extent – define these based on the classification of the design,
even though the pictures used in the design play a
crucial role. Consequently, considerable attention
should also be paid to the classification of a design. In this connection, it is important to note that OHIM
accepts classification of a design in one class only.
In addition, the Court mentions that designs are
sometimes to be judged side by side, and sometimes not.
Our experience of trademark conflicts leads us to
understand that the Court bases its judgments on
trademarks that are typically not judged side by side,
and that it believes that the notion of “imperfect
recollection” must be taken into consideration. This
aspect has also been discussed in the above case.
The Court finds that the informed user is sometimes
able to see the two designs side by side, and sometimes not. This also differs from trademark law. The Court’s decision in this matter not only illustrates
how extremely important the pictures of a design are,
but also that there are several variables to be considered when determining whether or not a design has
been infringed. The informed user varies from case to
case and the designs are not always seen side by side.
Whether a Community Design offers broader protection than a trademark is a difficult question to answer.
It is, however, obvious that the protection is different
and that the rights complement each other. Consequently, it is possible to use design rights strategically
in relation to competitors. 
Reported by
Henriette Vængesgaard Rasch,
Copenhagen office
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Getting personal in Sweden:
Liability of directors, officers, and owners for their company’s IP infringement
This article discusses how an IP owner plaintiff in
Sweden can improve its chances of winning and
securing a claim against an evasive infringing party.
It describes why Swedish law gives a good basis for
a claim for personal liability against the officers,
directors, board members and owners of a company who failed to do what they should have done
to avoid or stop an infringement. It is suggested
that such a claim for personal liability can give a
plaintiff party good leverage for winning its case or
getting a good settlement.
1. Introduction
Picture a scenario where a plaintiff in an IP infringement case has received a well-earned final ruling in
its favour, or perhaps secured a preliminary injunction against an accused infringer.
As the plaintiff is celebrating its success, it receives
news that the infringer recently emptied its warehouses of infringing goods by dumping prices, filed
for bankruptcy, or went into administration. The
on-going business of the infringer, apart from the
shares in the defendant company, has been sold to
a third party. The plaintiff is left not only with the
losses suffered as a consequence of the infringement, but also with the costs for the litigation.
The curtain falls and the show is over. Or is it? What
actions are now open to the plaintiff? And what could
have been done to prevent this bleak outcome?
2. Follow the Money – Pursue a Claim for
Personal Liability
Among the actions available to avoid so unfortunate a scenario is one that stands out from the
crowd. This is to pursue the officers, directors,
board members or owners involved in the infringing business with claims for personal liability (to pay
damages for the infringement).
Under Swedish law, such damages claims – together with requests for injunctions – can be made not
only against the infringing company as such, but
also against individuals who are directly involved in
the infringement.
It is a widely held belief among CEOs and other
directors in Sweden that there is virtually no personal liability in relation to third parties for economic loss caused by non-criminal acts undertaken
within the framework and business operation of a
company (notwithstanding personal conduct and
possible wrongdoings by the directors). This is also
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quite a common misconception among many
Swedish business lawyers.
It is therefore often quite a surprise when senior
directors are served personally as defendants
together with the company in an IP infringement
lawsuit. This happens surprisingly rarely in Sweden,
apart from in cases involving counterfeit goods.
In direct contrast to the prevailing misconception
that there is hardly ever any personal liability, Swedish law provides a forceful set of legal tools to enable
a plaintiff to avoid many of the above-mentioned
problems with an elusive defendant. These tools will
be outlined in the next section of this article.
3. Swedish Law does give a Basis for
Personal Liability
Swedish case law provides a clear precedent that
injunctions can be issued against representatives of
a company on the same grounds as against the
company itself, to avoid possible defiance.1
Although a director is not typically personally
responsible for the company’s acts and undertakings, personal liability for IP infringement can be
established under certain circumstances.
The basic rule in Sweden is that officers, directors,
board members and (active) owners of a company
who have taken part in, or have furthered, or have
failed to prevent an IP infringement can be held
directly and personally responsible for their company’s IP infringement.2
Basically, personal liability for IP infringement in
Sweden can be established on two main grounds,
either by the so-called “piercing the corporate veil”
doctrine, or by direct personal liability. These two
counts will be discussed in turn below.
3.1 Piercing the Corporate Veil
The conditions for piercing the corporate veil are
not clearly specified under Swedish law. However,
from existing case law, it is clear that the following
conditions are important: undercapitalization, lack
of independence, undue organization or influence
over the business by the owner (“alter ego”), and
conduct directed against or disloyalty towards
creditors or other parties who have suffered a loss.3
One of the problems with the piercing the corporate veil theory is that undercapitalization does not
have any legal, commercial, or even fiscal definition
in Sweden. What may be considered undercapitalization in one company may not necessarily be
considered undercapitalization in another. A very
low equity to assets ratio in a company is not, in
itself, sufficient to establish undercapitalization.
Moreover, undercapitalization is not, as such,
prohibited under Swedish law.
Companies with a small group of controlling shareholders, so-called closely held companies, might,
on the other hand, be more susceptible to piercing
the corporate veil claims. In such companies, one
or more of the owners is often also a member of
the board, or is the CEO, or is sometimes employed
as director, or for example as Engineering Manager.
Such companies therefore almost per se fulfil all
conditions for piercing the corporate veil.
3.2 Direct Personal Liability
The basic rule of direct personal liability is more
straightforward. It applies if a company has infringed
someone else’s IP and an officer, director, board
member or owner has participated in the decisions
or activities leading to the infringement, supposing
at least some degree of negligence on the part of
the officer, director, board member or owner.
The duty to investigate whether a product can be
protected by IP rights is extensive in Sweden. It
does not apply only to registered rights such as
designs, trademarks and patents, but also to copyright.4 To remain uninformed about possibly existing IP rights is normally deemed sufficient to
establish negligence in itself.5
The Swedish Supreme Court ruling in NJA 1986 s
702 (“Demonstration music”) cemented the
principle that a CEO of a limited liability company
can be held liable to pay damages because of
negligent corporate copyright infringement. Intent
or gross negligence is not a necessary prerequisite.6
Nevertheless, even though negligence can be
thought to come almost free of charge, it is still
very important to pinpoint not only the directors’
personal involvement in the actions or decisions,
but also what the directors did wrong (or failed to
do). Most judges in Sweden would not readily hold
that the burden of proof rests solely upon the
defendant (to exculpate himself). They would
perhaps not find negligence without clear evidence
from the plaintiff. In other words, the plaintiff’s best
line of attack is to taint the defendant by dressing
him up in culpa.
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3.3 Swedish Law on Personal Liability for IP Infringement – Brief Conclusion
The discussion above shows that there are still some
pitfalls and surprises left when it comes to personal
liability for a company’s IP infringement in Sweden.
For one thing, and surprising as it may be, personal
liability for a company’s IP infringement has not yet
been put to the test by the Swedish Supreme Court in
a patent, trademark or design case. All existing Supreme Court cases relate to copyright infringement.
NJA 1990 s 338.
1
NJA 1986 s 702, NJA 2005 s 180 and NJA 2008 s 1082. See
also the much discussed Pirate Bay case, Stockholm municipal court B 13301-06, 2009-04-17, p. 85.
2
NJA 1947 s 647, NJA 1975 s 45, NJA 1982 s 244, NJA 1992
s 375 and NJA 1993 s 188.
3
NJA 1995 s 164.
4
Prop 1993/94:122, page 54.
5
The principle confirmed in the court’s reasoning in NJA 1996
s 700; see also the court’s reasoning in NJA 2005 s 180,
especially page 201, and case comments in NIR 1987 s 87ff.
6
It is also uncertain what it would take to find
someone guilty of negligence in cases where the
infringing goods only fall within the mere formal
scope of protection of, say, a trademark or design
right, and where it is clear that no blatant copying
has taken place.
However, having said that, the basic rule under
Swedish law is still clear. The officers, directors,
board members and owners of a company who
have failed to do what they should have done can
indeed be held personally liable to pay damages for
their company’s IP infringement.
4. Conclusion: How to Deal with
an Evasive Infringer
The situation under Swedish law makes it clear how
an IP owner plaintiff should deal with an evasive
infringer.
The best way to pursue a claim in such a case is
obvious – make thorough preparations and go after
everyone right from the start.
There may be challenges along the way, but aggressive action probably gives the best chance for
success at the least risk and for a reasonable premium (i.e. initially higher litigation costs, but with
the prospects of recovery if the case is won).
It should also be clear that a well-founded claim for
personal liability is the perfect platform for a good
amicable settlement. Clearly, the bravado and
confidence in defending an infringement case is
usually much higher when personal belongings and
private welfare are not at stake. 
Reported by
Robin Berzelius,
Linköping office
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The importance of a party’s procedural right to be heard and fully present
its case in proceedings before the EPO
Decision from the Enlarged Board of Appeal (EBA)
of the European Patent Office (EPO) underlines
the importance of a party’s procedural right to
be heard and fully present its case during proceedings.
Since the EPC 2000 entered into force on December
13, 2007, new Article 112a provides parties adversely affected by a decision of a Board of Appeal (BoA)
with the possibility to petition for review of the
decision by the EBA. Such petitions can i.a. be based
on fundamental procedural defects that have
occurred during the appeal proceedings. So far,
about 60 such petitions have been filed.
The EBA points out that the right to be heard is a
fundamental right of the parties that must be
safeguarded, irrespective of, for example, the
merits of the party’s submissions. For this reason
the decision under review was set aside, and the
proceedings will probably be reopened in order to
give the petitioner the opportunity to present his
arguments on inventive step orally. 
In a recent decision, R 3/10, the EBA found that the
BoA had fundamentally violated the petitioner’s
right to be heard, and the impugned appeal case
was re-opened. This is one of only two cases so far
out of 60 petitions where the EBA has decided in
favour of the petitioner. The previous occasion was
in decision R 7/09, where the rare circumstance
occurred that the EPO apparently failed to notify
one of the parties of the other party’s brief.
The recent decision R 3/10 concerned the patent EP 1
284 604 B1, relating to a method for preparing raw
fish meat. The patent was maintained in amended
form in opposition proceedings, and the decision was
appealed by both the patentee and several of the
opponents. At oral proceedings before the BoA, the
parties first argued novelty of the main request. At
least the proprietor/petitioner was apparently under
the impression that a decision would first be taken on
novelty, and that inventive step would be discussed
separately. Much to the surprise of the proprietor/
petitioner, the BoA then announced its decision that
the claims of the main request were novel, but lacked
inventive step. Since a BoA is bound by its decision,
once given, and cannot withdraw it, inventive step of
the main request could not be discussed any further.
Moreover, inventive step in relation to the remaining
auxiliary requests was only admissible in respect of
the new features added in these requests.
The EBA has now come to the conclusion that this
constituted a fundamental violation of the proprietor’s/petitioner’s right to be heard. In view of the
circumstances, the parties could have misinterpreted the BoA’s intentions, which is apparently also
what the petitioner did do. This led to a situation
where the petitioner, once the misunderstanding
had been realized, would no longer be allowed to
fully present his case.
Reported by
Urban Lind,
Gothenburg office
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Third-party observations before the EPO – useful tool or useless parenthesis?
“Well, it depends…” is an answer all too often used,
but one that is appropriate nevertheless when it
comes to the usefulness of third-party observations.
On the one hand, these have the potential to create
an insurmountable road block to a competitor’s
patent application; on the other hand, they are,
depending on the jurisdiction, associated with
limitations such as a limited time window for filing
the observation, severely limited involvement in the
proceedings and strict limitations concerning the
nature of prior art that may be cited in oppositions
and inter partes re-examination proceedings.
A third-party observation (TPO) is sometimes also
called “the poor man´s opposition”. The interesting
question is: Are there any advantages in choosing a
TPO over an opposition – other than the lower costs
associated with this approach?
A TPO in proceedings before the EPO is governed by
Article 115 and Rule 114 of the EPC. Following the
publication of a European Patent Application, any
third party may file a TPO during pending proceedings. This applies not only during the examination
stage that precedes grant, but also during any
opposition proceedings, or more precisely until a
decision finalizing the procedure has been taken.
TPOs may also be filed during central limitation
proceedings. But as patentability is not examined in
such proceedings, the EPO only forwards the TPO to
the proprietor, who may adapt the limitations in
view of the content of the TPO. There is no official
fee associated with the filing of a TPO. Furthermore,
a TPO shall be filed in writing and it shall be in an
official EPO language. If a TPO is filed in any other
language, a translation may be required by the EPO,
but no time limit is set for this. It is also possible to
file a TPO against a pending PCT application designating the EPO. In this case, however, the TPO is just
placed in the file for later consideration by the EPO
in the regional phase.
A third party filing a TPO will not become a party to
the proceedings, nor will a third party be notified of
any submissions filed by others before the EPO or of
any decisions in the procedure. However, the third
party can monitor the procedure by file inspection
according to Art 128(4) and may file a further TPO.
Article 115 stipulates that objections may be filed
against the patentability of an invention by third
parties. In practice this means that all kinds of
objections made in a TPO, including novelty, inventive step, added subject matter, clarity etc. are
considered by the EPO, during both examination and
opposition proceedings, particularly in clear-cut
cases. It should be noted that since lack of clarity is
not a ground for opposition of a granted patent, an
objection concerning lack of clarity may be raised
only in a TPO. During opposition proceedings an
objection against clarity may only be raised in the
event that an amendment is made by the proprietor.
The relevance of the material filed should be explained and substantiated in the TPO. If prior use is
referred to, all the evidence required with regard to
what, where, when and to whom, should be filed
directly, as the EPO does not invite the third party to
provide such information. After filing, the competent
organ at the EPO will consider the relevance of the
TPO and will then forward the TPO to the applicant
or proprietor, together with objections based on the
TPO, in cases where this is applicable. As a TPO may
be filed anonymously, anyone can use a TPO to
attack a competitor’s patent without revealing his or
her identity.
An important concept underlying TPOs is that only
true third parties may file a TPO; this excludes the
applicant, proprietor or any other party in the proceedings, such as an opponent, from doing so. Since
it is allowable to file a TPO anonymously, this does, in
theory at least, open the way for a potential misuse
of the system. Still, anonymously filed TPOs have
been admitted not only in ex parte proceedings (see,
for example, T 0258/05 and T 1336/09) but also in
inter partes appeal proceedings (see e.g. T 0735/04).
T 1336/09 is interesting since the Technical Board of
Appeal in that case considered a TPO filed anonymously even though this was filed only six days (four
working days) before the scheduled ex parte oral
proceedings. The appellant’s representative was
contacted by the rapporteur with an offer to postpone the proceedings. In its decision the Board
considered that the lateness of the TPO should not
per se be a bar to its admission into the proceedings.
Another case of interest is T 146/07 in which an
anonymously filed TPO was not considered. This case
concerned an inter partes appeal, and the decision
emphasized that “[i]dentification is particularly
important in the context of opposition proceedings
in order to allow the competent organ of the EPO to
verify whether the observations are indeed filed by a
third party rather than by a party to the proceedings.
Otherwise, a party might be tempted to submit late
observations and/or documents by means of anony-
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mous TPO in order to avoid negative procedural
consequences such as apportionment of costs.”
T 1336/09 also acknowledged the reasoning of
T146/07, but it was found that the situation was
different since T 1336/09 related to an ex parte
proceeding. The board in T 1336/09 found that in ex
parte proceedings the appellant is the sole party and
can at any time raise new issues or submit new prior art
– as, indeed, can the board of its own motion by virtue
of Article 114(1) EPC. Accordingly, the risk of an anonymous TPO providing a cover for procedural abuse can
be largely excluded in ex parte proceedings.
Thus, a TPO filed anonymously in ex parte proceedings is most likely to be accepted, whereas a TPO
filed anonymously in inter partes proceedings may
very well lead to a situation where the board will
refuse to consider the TPO.
Comparison between TPOs and oppositions
When comparing TPOs with oppositions, there are
several factors that speak in favour of filing a TPO
and several for filing an opposition. One should also
consider the possibility of first filing a TPO during the
examination proceedings and subsequently filing an
opposition, if necessary.
As there is no official fee and in view of the fact that
several observations may be filed, TPOs are normally
a less expensive way to block a competitor’s patent
application. In contrast to the situation that applies
when filing an opposition, a party wishing to file a
TPO does not have to prepare a complete case
within a certain time limit. Moreover, in response to
any claim amendments made by the applicant, a
renewed search can simply be made and a new TPO
with new documents can be filed. There is no need
to explain why such documents should be admitted
into the proceedings. Moreover, there is no risk of
the new documents not being admitted into the
proceedings as is the case in opposition proceedings, except in the case of anonymous observations
filed in inter partes proceedings. With a TPO, the
third party only has to explain the relevance of the
documents. Since a TPO may be filed anonymously,
it is possible for a party to obstruct a competitor
without drawing his or her attention to the fact that
the party has an interest in the technology.
However, there are some drawbacks in using a TPO
rather than filing an opposition. As already mentioned, a third party that files a TPO is not a party to
the proceedings and has no right to appeal any
decisions. Also, it is difficult to base a TPO on a prior
use case – even more difficult than in an opposition.
The EPO Guidelines state clearly that “If the observations relate to alleged prior art available other than
from a document, e.g. from use, this should be taken
into account only if the alleged facts either are not
disputed by the applicant or proprietor or are established beyond reasonable doubt”. Since the observer
not will become a party to the proceedings, he will
not be invited to provide any evidence that is lacking
or be able to explain and develop his prior use.
Sometimes the circumstances are such that it may
be preferable to wait with the substantiation of the
objections in a TPO until opposition proceedings.
However, in many cases the primary examiner will
also be a member of the Opposition Division. Thus, if
a TPO is filed during examination proceedings but is
not fully substantiated, the examiner may disregard
the TPO and thus tend also to disregard the observations in the opposition proceedings, even if they are
properly substantiated at this point. Even though the
member of the Opposition Division should look at
the case with an open mind, there is a risk that,
subconsciously, he makes the same assessment as he
did during examination proceedings. To avoid this
situation, a TPO filed during examination proceedings should be as fully substantiated as possible.
A situation where it might be preferable to file an opposition instead of a TPO is when there is a
presumption of added subject-matter in a main
claim, i.e. a violation of Article 123(2) EPC.
If an objection to added subject matter is raised in a TPO during the examination proceedings, the
applicant may simply make an amendment by
removing or changing the feature that is the cause
of the added subject-matter.
However, if the objection is raised in an opposition,
it may be possible to invoke the inescapable trap for
the proprietor, namely that the feature constituting
the added subject-matter cannot be kept and
cannot simply be removed, since that would result in
an unallowable broadening of the scope of the
patent as granted.
The ultimate goal when filing a TPO or an opposition
is to convince the EPO to refuse the application or
revoke the patent. The next best outcome is to force
the applicant or proprietor to amend the claims in
such a way that they no longer present a problem.
By filing a TPO this can be achieved at minimum cost
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and without even revealing the identity of the third
party. Most importantly, by filing a TPO it is possible
to convince the Examining Division at an early stage
not to allow a patent to be granted, whereas during
opposition proceedings the Opposition Division has
to be convinced to revoke a patent that has already
been granted.
In other words, in situations where there is the
potential of conflict with a competitor’s patent,
serious consideration should always be given to filing
a TPO early in the proceedings as a possibly highly
useful strategic tool. 
Reported by
Dan Henriksson, Malmö office
and Mikael Andersson, Lund office
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