In patent law, the term reach-trough claims refers to claims covering future inventions which are, however, not sufficiently disclosed in the application. In 2001, in order to harmonize the treatment of reach-through claims within the context of the "Trilateral Project" in existence since 1983, the European, Japanese and US patent offices coordinated their handling of these claims (Trilateral project B3b, 2001, "Report on Comparative study on biotechnology patent practices Theme: Comparative study on `reach-through claims´"). A consensus was reached, that the subject-matter of the claims should essentially be limited to the invention explicitly disclosed in the application.

Experience shows, that the patent offices, including the European Patent Office, strictly enforce this restrictive policy for the treatment of reach-through claims. A recent example for this is the decision T 1063/06 of the Technical Board of Appeal 3.3.10 of the EPA, dated February 3, 2009. The applicant requested a claim that reads as follows: "Use of compounds, which are also capable of stimulating the soluble guanylate cyclise independently of the heme group in the enzyme, to manufacture medicaments for the treatment of cardio-vascular disorders such as angina pectoris, ischemia and cardiac insufficiency".

Structurally defined compounds with the desired properties were only disclosed in the dependent claims of the application. However, the applicant did not want to be limited by this in order to overcome the corresponding objection of insufficient disclosure (Art. 83 EPC) and claimed nothing less than all yet to be identified compounds with the desired properties. In the absence of any rules for selecting the compounds in the application in suit and without the possibility of falling back on common general knowledge, somebody would first have to discover the desired compounds in order to realize their utilization as a medicament as per the invention. According to the EPO, the claim was nothing but an attempt at gaining protection for medical compounds with the desired function and therefore for an unfinished invention. The claim thus was rejected based on Art. 83 EPC. Decision T 1063/06 falls squarely within the established case law on reach-through claims (compare also the journal article "Reach-Through Ansprüche" ("Reach Through Claims") available for download from this website).

The "Italian torpedo" is a frequently favoured procedural device in European cross-country patent infringement disputes. Here, an alleged patent infringer brings forward an action in Italy in which he seeks the declaration by an Italian court that he does not infringe one or more certain foreign patents (negative declaratory action). If the counterparty then brings an infringement action against the alleged infringer in a country where such a patent is valid, this action is to be suspended under the European Council Regulation (EC) No. 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. This “blocks” the infringement action for years, because and insofar as the Italian courts live up to their reputation of not conducting legal proceedings expeditiously unless pressed by the petitioner, who is not in a hurry in such “torpedo” cases. The admissibility and merits of the Italian action are irrelevant in this context.

Within the framework of the Regulation (EC) No. 44/2001, it is important that the Italian torpedo is brought before the Italian court before the counterparty files an infringement suit. In a recent case, a party that felt threatened by a European patent application wanted to be especially quick and filed its negative declaratory action with the Tribunale de Milano already during the patent examination procedure. The request of this action was considerably broad in the sense that the petitioner was seeking a ruling that none of its “activities” in Belgium, France, Italy, Germany, the Netherlands and Spain would infringe on the patent and property rights derived from it.

This torpedo was then used as a defence against an infringement suit at the District Court of Düsseldorf. This infringement suit was based on German parts of European patents which were granted for divisional applications based on a common parent application. The latter was the one mentioned in the request of the Milanese action.

However, the District Court and, on appeal, the Higher Regional Court rejected the motion to suspend. The appellate court essentially found that if the Milanese court had decided soon after receiving the negative declaratory action - thus before the patents were granted – its decision could not have dealt with the infringement of existing patents. Therefore, the Italian subject-matter under dispute could not have been the same as subject-matter of the Düsseldorf case, namely the infringement of – granted – patents. This is not changed by the fact that the Italian proceedings were delayed until after the patents had been granted, especially since the request was not amended to reflect this aspect. So, in view of the courts, Regulation (EC) No. 44/2001 did not require a suspension.

The court's reasoning was not based on the fact that the divisional patents, from which the patents-in-suit for the action in Düsseldorf derived, were not specifically mentioned in the Italian proceedings. Rather, the decision generally makes clear that the Italian torpedo cannot be fired before the patent is granted, which is of course appreciated.

When evaluating the patentability of claims, the question often comes up of how to deal with documents revealing prior art the disclosure of which does not seem to be reproducible. A recent nullity decision by the Xa. civil senate of the BGH (Federal Supreme Court, Bundesgerichtshof) shows nicely how to proceed in this case: The question of whether or not prior art is reproducible plays no role when determining the novelty of an invention. However, documents revealing non-reproducible prior art are to be disregarded for the evaluation of the inventive step.

The specific example concerned the fabrication of plastic components with cavities. The attacked patent in suit was protecting a method by which good surface quality of the component was realized through a process in which the molding material was pressed out against a counter pressure profile, such that a plug formed in the injection nozzle. With the exception of the creation of the counter pressure profile, all aspects of the procedure to be protected were found in a previously published French patent.

The Federal Patent Court (Bundespatentgericht) issued a declaration of nullity against the patent in suit, since a skilled person would be expected to adapt the teaching disclosed in the French document to inevitably create a counter pressure profile. Furthermore, the formation of a plug was also anticipated by a US patent.

During the appeal, the BGH consulted an expert who concluded that the procedure disclosed in the French publication could not work. It was taken from the technical field of shaping metals but could not be transferred to molding plastics due to the difference in viscosities. – The BGH concluded the examination at that point. In contrast to the Federal Patent Court, it did not consider possible thoughts of a person skilled in the art or combinations with other disclosures. The underlying thought was that a skilled person would realize that the invention could not work, and subsequently dismiss it, at the latest when attempting to reproduce the disclosed invention.

According to the examination system of the BGH, shortcomings of the prior publication do not come into play during the determination of novelty, however. This makes sense, since if the subject of the patent is reproducible, it must contain at least one aspect that distinguishes it from the non-functioning prior art.

For future practical considerations, it should be noted that only the opinion of the consulted expert helped the patent holder on the path to success. According to the new procedural law for nullity actions, in effect since one month, experts are no longer regularly consulted during the appeal process, as was previously the case (see contribution from 10/01/2009). Rather, questions like reproducibility and prior art generally need to be addressed in the court of the first instance. For such cases that means the added expenditure of performing experiments and seeking expert opinions, in order for the parties to convince the technical judges of the nullity senates of the Federal Patent Court.

Upon conclusion of patent nullity proceedings the Federal Supreme Court (Bundesgerichtshof, BGH) determined the maximum possible value of matter in dispute to € 30 Mio, even though both parties declared an amount of € 2.5 Mio (decision of 7/28/2009 - X ZR 153/04 - "Druckmaschinen-Temperierungssystem III"). This was based on a pending action for payment in the amount of more than € 32 Mio for patent infringement.

Generally, the decision makes sense. It is a long-standing practice to base the value of matter in dispute of a nullity action on the value of the infringed patent at the time the action or appeal was filed (BGH, decision of 10/11/1956 - I ZR 28/55; BPatG, decision of 11/4/1986 - 2 Ni 29/85, BGH, decision of 7/12/2005 - X ZR 56/04). According to the BGH, the value of matter in dispute of the infringement action constitutes the "only substantial clue" with regard to the value of the patent. In as far as the claim should not be justified, this should not be determined during the determination of the value of matter in dispute during the nullity proceedings. A "fantasy amount" in the infringement action could be ruled out anyway, because the plaintiff is required to pay a portion of the value of matter in dispute as an advance of court fees.

However, based on such a value of matter in dispute, the advance of court fees, payable by the plaintiff when the suit is filed, already exceeds the amount of € 400,000.-. The amount payable by the defeated party for the entire legal fees is in the millions. It is evident, that these kinds of sums will prevent a potential plaintiff from even filing a nullity action in the first place. Consequently, both parties to the proceedings were arguing for a low value of matter in dispute in part because they were afraid that such large amounts would have a "prohibitive effect".

However, the BGH did not agree. The danger of an undue economic burden should be countered by a request to lower the value of matter in dispute. Apart from that, the BGH wants to be clear in that there is no room for considerations of equity. How serious the BGH is, can be seen by the formulation of a headnote saying that "generally, the stated value of matter in dispute of a patent infringement suit for compensation is to be fully considered".

The decision and the headnote only refer to an infringement action where the value of matter in dispute is stated. However, it should be assumed that the BGH might not see things all too differently in actions without an explicitly stated value of matter in dispute, especially in suits to cease and decist. The monetary risk in patent nullity actions is therefore evident. It can be evaded by preventively raising an opposition against a problematic patent. The costs for opposition proceedings are markedly lower (European Patent Office, EPO: € 670.-; German Patent- and Trademark Office, DPMA: € 200.-) and there is generally no reimbursement of the costs (for more advantages concerning opposition proceedings in relation to nullity actions).

Several important changes in intellectual property laws have come into force by the modernization of patent law act (Patentrechtsmodernisierungsgesetz) that are effective of today.

Probably the most important changes for practical corporate considerations concern the law on inventions of employees (Arbeitnehmererfindungsgesetz, ArbEF):

- The statutory written form for reports of invention and other declarations according to the ArbEG has been replaced by the text form. Therefore, reports can now also be sent as E-mails.

- The employer no longer has to timely claim the invention. From now on, the rights for an invention at the workplace pass over to the employer unless he explicitly waives these rights within four months of having received the report of invention.

- The distinction between unlimited and limited claiming of an invention has been removed.

The new procedural laws for nullity actions against patents filed from October 1, 2009 onwards are also important:

- The proceedings at the court of the first instance are being streamlined. In particular, there are now rules on delay in effect, but the patent court also has the obligation to warn the parties.

- The second instance has been completely restructured. The BGH as court of appeal generally conducts only a legal check. New facts can only be introduced into the proceedings within the constraints of the code of civil procedure (Zivilprozessordnung, ZPO) for appeal proceedings. The options of the patentee to counter the suit with new requests are therefore severely limited. For the future, the BGH is generally expected to no longer consult an expert, so that the problem of challenging the expert on grounds of bias has also been defused. Legal success will now be rooted in the first instance, much more than in the past.

Important changes to trademark law concern proceedings involving two parties:

- Oppositions lodged against trademarks with an application date on or after October 1, 2009 are no longer limited to registered trademarks, but may also be based on corporate descriptions such as corporate catch phrases and non-registered trademarks in use. Apart from being based on similarities of goods and services, oppositions based on rights on known trademarks may also be based on unfairness. As far as these points are concerned, the German opposition proceedings have been brought in line with the one against community trademark applications before the Office of Harmonization for the Internal Market (OHIM).

- In all proceedings involving two parties, thus also in cancellation proceedings, one party can force a bypass of the appeal process in the second instance ("Erinnerung").

Further changes of various laws concern several different procedural questions. For example, proceedings on the application for a compulsory license according to the European Council Regulation 816/2006 (concerning compulsory licenses for patents covering the manufacturing of pharmaceutical products for export in countries with public health problems) are now embedded into the nullity proceedings via the new § 85a GPA (Patentgesetz, PatG).

Changes also apply to the fees. In particular, fees have been introduced for German patent applications for the eleventh claim and every claim thereafter. However, with € 20.- the fee is comparatively moderate.