German method patents can be infringed if the protected method is used domestically or, under certain circumstances, if it is offered for use in Germany. The same applies to the German part of a European patent. As long as the entire method is used or offered for use domestically, the case is clear.

However, the Court of Appeals of Düsseldorf now needed to decide a case where a patented method was only partly executed in Germany. The case concerned a method for operating a prepaid telephone card system. According to the court, the plaintiff utilized the method but operated the corresponding PABX system in Ireland. Therefore, the majority of steps comprised by the method were also executed in Ireland. However, the prepaid telephone cards were distributed and used in Germany. The claimed method included the step of “distribution … [of the cards] for sale to the public”. 

The Court of Appeals, which in view of the unsolved legal situation granted a temporary stay of execution, earlier (contribution dated January 12, 2010) eventually found the domestic patent to be infringed (decision of December 12, 2009, I-2 U 51/08 – Prepaid-Telefonkarte). It could be sufficient that only one step of the method is executed in Germany. However, according to the court, an economic-normative point of view would then be needed as a suitable corrective, which for establishing accountability requires the behaviour in question to be specifically aimed at having an effect on the domestic market. Concerning this aspect, the Court of Appeals pointed to the fact that coin-operated and card-operated telephones are becoming obsolete in Germany.

The jury on this legal issue is presumably still out, as the court allowed revision to the Federal Supreme Court (Bundesgerichtshof, BGH).  What is remarkable in this case, is that the proprietor was fortunate in that the distribution was included in the claim.

If a Community trademark has a reputation in the Community, pursuant to Articles 9 (1) (c) and 8 (5) CTR, the scope of protection can be extended to goods or services which are dissimilar to those for which the mark is registered. In the past, there existed uncertainty as to the territorial interpretation of the expression “has a reputation in the Community”. The Supreme Court of Austria was seeking clarification on this issue and referred (among others) the following question to the European Court of Justice (ECJ) for a preliminary ruling:

Is a Community trade mark protected in the whole Community as a “trade mark with a reputation” for the purposes of Article 9 (1) (c) of the regulation if it has a “reputation” only in one Member State?

What gave rise to this question were legal proceedings in which the proprietor of the earlier Community trademark, which is well known in Austria, was seeking an injunction restraining use throughout the entire Community and based his application on Article 9 (1) (c) CTR. Thus, the Supreme Court was faced with the question if a trademark enjoying a reputation in Austria may be considered to be a trademark that “has a reputation in the Community” for the purposes of Article 9 (1) (c).

In its decision C-301/07 from October 6, 2009, the ECJ ultimately answered this positively and interpreted Article 9 (1) (c) as meaning that the Community trade mark must be known by a substantial part of the relevant public in a substantial part of the territory of the Community. According to the ECJ, the territory of the member state concerned can be regarded as forming a substantial part of the territory of the Community.

For the future, it therefore has to be assumed that a Community trademark may enjoy extended protection as a mark with a reputation already if it has a reputation only in a single member state.

The European Patent Convention will enter into force for Albania on May 1, 2010. European patent applications filed on or after this date will automatically include the designation of Albania.

After this extension, the European Patent Convention will comprise 37 member states. Besides the member states of the European Union, the member states thus far are Iceland, Liechtenstein, Monaco, Norway, Croatia, Macedonia, San Marino, Switzerland and Turkey.

Inventions related to biotechnology have always been looked at closely when it comes to human embryonic stem cells.  Recently, there has been a referral to the European Court of Justice (ECJ, “Europäischer Gerichtshof”, EuGH) by the Federal Court of Justice of Germany that concerns the field of embryonic stem cells.

On December 17th, 2009 the German Federal Court of Justice (BGH, “Bundesgerichtshof”) issued a decision, which concerns the interpretation of Article 6 of the Directive 98/44/EC on the legal protection of biotechnological inventions with regard to the interpretation of the term “human embryo” (BGH, decision Xa–ZR 58/07, “Neural precursor cells”).

The decision recites three questions that are referred to the European Court of Justice (ECJ) under Art. 267 of the Treaty on the Functioning of the European Union for preliminary ruling:

“1. What is meant by the term “human embryos” in Art. 6 Sec.2. (c) of the Directive 98/44/EC?

a) Does this term comprise all stages of development of human life beginning from the fertilisation of the egg cell onwards, or are there other conditions that need to be fulfilled such as reaching a certain stage of development?

b) Are the following organisms also comprised by this term:

(1) unfertilised human egg cells, in which a nucleus from an adult human cell has been transplanted;

(2) unfertilised human egg cells, which have been triggered by parthenogenesis towards division and further development?

c) Does this term also comprise those stem cells, which have been derived from human embryos that were in the blastocyst stadium? 

2. What is meant by the term “use of human embryos for industrial or commercial purposes”?

Does that include any commercial exploitation in the sense of Art. 6 Sec.1 of the Directive, and does that also include a use for the purpose of scientific research?

a) because the patent relates to a product, the generation of which requires the prior destruction of human embyos,

b) or because the patent relates to a method, which requires such a product as starting material?”

Subsequently, Greenpeace filed a nullity suit against this patent at the Federal Patent Court (BPatG, first instance) in Munich based on an alleged violation of ordre public and morality and requested to declare nullity of the patent in as far as the claims cover neural precursor cells that have been made from human embryonic stem cells.  The Federal Patent Court declared nullity of the patent insofar.

The patentee filed an appeal against said decision at the Federal Court of Justice (BGH), which stayed the proceedings and referred the above legal questions to the ECJ.

With regard to German patent law it is all about how section 2 of the German Patent Act is to be interpreted, which excludes patents for “the use of human embryos for industrial or commercial purposes” (§ 2 (2) No.3 PatG) – which is the same wording as recited in Art. 6 No.2 (c) of the Directive, which was implemented in German Patent Law.

According to the BGH Art. 6 of the Directive is unclear and not devoid of any ambiguity with regard to several aspects – what are “human embryos”?   Is a stem cell that has been derived from a blastocyst an “embryo” even if it is not capable of developing into a human individual?   And is a “blastocyst” an “embryo” according to Art. 6 of the Directive?   The latter question will be relevant if the exclusion of “use of human embryos” in the Directive already would apply when the claimed human stem cells (which are not embryos themselves) require destroying blastocysts for making them.

If the ECJ would say that the requirement of using blastocycts/human embryos first in order to get embryonic stem cells is against Art. 6 Sec. 2 (c) of the Directive this would not come as a surprise.  In fact, such view would correspond to decision G 02/06 (“Use of Embryos”/WARF) of the Enlarged Board of Appeal of the EPO, which said that EP patents cannot be granted for products that require at the time of filing the destruction of human embryos, even if the method as such is not part of the claims.

Where an invention concerns a chemical product, this product can be defined in a patent claim directly by its chemical formula or rather by the exact ingredients of the formulation. If need be, the product may be defined indirectly as a product of a specified process. If no such definition is possible, the European Patent Office (EPO) - as an exception - allows the definition of the claimed product by its parameters, provided that these parameters can be clearly and reliably determined.

The recent decision T 1389/07 of the Technical Board of Appeal 3.3.06, dated December 14, 2009, shows again that parameter-defined product claims are to be regarded as an exception limited to cases where the product can otherwise not be defined. The decision concerned a cleansing composition comprising a polymer/oil blend. The product claim characterized the polymer/oil blend solely by adhesiveness parameters. However, since the inventive polymer/oil blends were explicitly disclosed in the application, a definition of the polymer/oil blends in the claim via the respective polymers and oils was also possible. Therefore, the board did not accept the product claim based on the adhesiveness parameter of the blend. The applicant could only overcome the objection of lack of clarity pursuant to Article 84 of the European Patent Convention with a modified product claim specifying the polymers and oils as per the invention.

• the Court of Appeals, in light of a preliminary examination, finds it likely that the judgement will be reversed or
• there exists the likelyhood that the defendant would incur exceptional damages beyond the normal effect of the execution.

In its decision from July 1, 2009 (file reference: I-2 U 51/08), the Court of Appeals (Oberlandesgericht) of Düsseldorf has extended the first point to cases where a reversal of judgement may not necessarily be obvious but where, however, a key legal point has not been dealt with by the lower court. The subject-matter of the patent in suit was a telecommunication method involving six steps, four of which the defendant – according to the Court of Appeals – was performing outside Germany. This poses the question under which conditions a process of which several steps are executed abroad, constitutes infringement of a German patent or the German part of a European patent. According to the Court of Appeals, this matter is not clarified by case law and has not been treated in the literature with the required depth. Since the District Court had not dealt with this difficult legal question central to the case, the petition for a stay of execution was to be granted as a special exception.