Blogs and EP Oppositions

Once a patent has been granted by the European patent office, Article 99 EPC allows for a nine month period when anyone can oppose it. Oppositions are filed on only a small fraction of patents that are granted by the EPO. Most are granted unnoticed by everyone except the people concerned. Even for those who do pay attention, the cost of filing an opposition will act as a fairly strong deterrent to all who do not have deep pockets or a strong case (preferably both), together with the nerve to see the process through to its, often protracted, end. This should be borne in mind when reading the following.

European application 01309765.4, filed in 2001 by Open Business Exchange Limited (later changed to OB10 Limited), was granted as EP1220114B1 by the EPO on 29 October 2008. According to the EPO Register, this is the only patent that OB10 have had granted by the EPO, and is also the only application they have filed (and which has been published). The patent relates to a way of translating electronic invoices from one format to another, using software that translates an incoming invoice into a standard format and then translates the invoice from the standard format into another format for output. This allows businesses to issue invoices in their own format and ensure that whoever receives the invoices gets them in their own chosen format.

On May 30 2009, a blog post was written about the patent, claiming that the patent was invalid because it was an "attempt to patent an old pattern [sic] known from middleware products and VANs". As well as citing some prior art known to him, the author of the post, Mikkel Brun, mentioned that there was a 9 month period for opposition (helpfully providing a link to the appropriate form) and stated the following:

"I urge suppliers of Middleware products and service providers to send an opposition to the patent. This could hit you hard! I have been told that an opposition has to be made for each individual country covered by the patent [IPKat comment: this is wrong - one is enough], so it is not a trivial task lying in front of us."

Mr Brun then followed up with another post on 6 June 2009 detailing further references and comments about why in his view the patent was invalid.

A total of 19 notices of opposition were subsequently filed against the patent, between 10 July 2009 and the final date of 29 July 2010. Thirteen of these were filed in the last 3 days which, though slightly risky, is common practice for attorneys used to working towards tight deadlines. Except for one notice filed by Certipost NV, all were filed by European patent attorneys on behalf of their clients. Only one has since been withdrawn. Most, if not all, of the opponents must therefore have been willing to spend substantial sums of money (most likely thousands of Euros) in getting proper advice and having their notices filed for them, together with paying the official opposition fee in each case.

As a result, at the latest count, the prosecution file runs to 7833 pages. This is a lot of material to get through, and would make dealing with and defending the oppositions somewhat time-consuming. In their letter of reply to the oppositions, the proprietor's attorney stated:

"It is believed that the large number of oppositions is due to a blog created by one Mikkel Hippe Brun which can be seen at http://blog.schemaworks.com. For example, the blog has EPO Form 2300 available as a download to enable opponents to launch an opposition [IPKat comment: this is wrong - the blog only provides a link to Form 2300 hosted on the EPO's website, and provides no clues as to how it should be filled in].

Whilst it is accepted that any person may give notice of opposition under Art. 99 EPC, it is submitted that setting up a blog to inundate the proprietor with oppositions is an abusive process which puts the proprietor as a relatively small company at a significant disadvantage. The proprietor requests that the Opposition Division bears this in mind during the opposition procedure, particularly with regard to requests for extension of time and an award of costs, if deemed appropriate."

I can see how such a large number of oppositions being filed against a patent could make its proprietor a bit annoyed, but I fail to see how anyone could be held to blame for this merely as a result of publicising the fact that i) a patent has been granted and ii) an opposition could be filed, together with some ideas that might be useful in opposing the patent. If that was the case, then perhaps the IPKat himself should be worried, after he pointed out the possibility of an opposition in another case, after which several oppositions were filed.

The main function as far as I see it of the opposition procedure is to provide a way of getting patents that should not have been granted off the register before they become much harder to remove once they become purely national rights. The EPO examination procedure, thorough though it is, is not perfect, and cannot be expected to always pick up the sort of prior art that someone working in the field of technology in question would know of. This seems to be one of those cases, and I would not be surprised if the patent does not survive being opposed. It may be hard on the proprietor, but if you play the game you have to face the possibility of others playing it too.

Why are CTM applications through the Madrid System less often opposed?

IPKat reader Alfred Strahlberg of Strahlberg & Partners, Switzerland, points to an interesting statistic: roughly 17% of all CTMs filed directly with the OHIM are opposed (see table above, click on it to enlarge - I know it's impossible to read). However, CTMs filed using the Madrid System - i.e. international marks seeking extension to the EU - are only opposed in about 8% of all cases (see table below).

The difference is quite large and definitely not due to chance. The IPKat thinks that one reason why "IR CTMs" are opposed less often is that the opponent may oppose the base registration instead and kill the IR mark once and for all ("central attack"). Only when that was not possible or seems unadvisable (home turf advantage for the registrant?) would he or she chose to oppose before the OHIM. This would mean that the combined rate of opposition - base registration and before OHIM - should be about the same for international marks as for directly filed CTMs; the IPKat lacks the empirical data to back this up, though (in Switzerland, roughly 5% of all national registrations were opposed in 2008; adding this figure to the 8% opposition rate for "IR CTMs" one arrives at a combined opposition rate of about 13% - still not quite 18%, but getting closer).

Do the IPKat readers have other explanations for the difference in opposition rates?

PRAZOL, PREZAL ... nine years later

The Court of First Instance of the European Communities gave its decision on Tuesday in Case T‑95/07 Aventis Pharma SA v Office for Harmonisation in the Internal Market, Nycomed GmbH, an appeal involving a Community trade mark opposition.

Back in 1999 the applicant (now Nycomed) sought to register as a Community trade mark the word PRAZOL for pharmaceuticals in Class 5. Aventis opposed, citing its own 1993 Benelux trade mark PREZAL for ‘pharmaceutical, veterinary and hygienic products’, also in Class 5. The Opposition Division dismissed the opposition on the ground that Aventis had not proved sufficient use of its earlier mark. There then followed a game of ping-pong between the Opposition Division and the Board of Appeal, which eventually found that there was no likelihood of confusion among relevant consumers. Even though the goods in respect of each mark were identical, the marks had no particular meaning and the clear phonetic difference between them outweighed their low level of visual similarity. Aventis applied to have the Board'd decision annulled.

The Court of First Instance annulled the Board's decision. In its view the similarities between the two marks outweighed the dissimilarities. The fact that the relevant public consisted of end-consumers among others, whose level of attention could be considered to be above average, was insufficient, given the identical nature of the goods concerned and the similarity of the marks, to rule out the possibility that those consumers might believe that the goods came from the same undertaking or, from economically-linked undertakings. In the circumstances, since there was a strong visual and phonetic similarity between the marks and no meaning could be attributed to them which would enable end-consumers to distinguish between them, the marks very similar and a likelihood of confusion on the part of the relevant public could not be ruled out.

The IPKat feels that this is really a sorry tale. To take from 1999 to 2008 in order to establish whether PRAZOL and PREZAL are similar or not seems ridiculous. There must be a better way of dealing with these questions, particularly where healthcare issues such as consumers' ability to distinguish products and the need to ensure that products are brought to the market are at stake.

Can evidence of use that is no use still be of use?

Minimax GMBH & Co v Chubb Fire Ltd, a Chancery Division decision from England and Wales, was handed down yesterday by Mr Justice Floyd. It has not yet been posted on BAILII, but was noted this morning by the subscription-only LexisNexis Butterworth service.

Way back in 2005 the Trade Marks Registry ruled on Minimax's application to revoke two of Chubb's trade marks -- one for the device pictured on the right and the other for the word MINIMAX itself. According to Minimax neither mark had been used for a period of five years. The hearing officer agreed on the evidence that there had been no genuine use of the marks during that period.

Minimax had previously applied to register mark MINIMAX; Chubb, minus its two earlier registered marks, now opposed, claiming that use by Minimax of that mark was liable to be prevented by the law of passing off and the hearing officer agreed. Reaching a decision without the benefit of either an oral hearing (since neither side asked for one) or cross-examination, he concluded that Chubb indeed enjoyed goodwill and a reputation in MINIMAX in respect of fire extinguishers, their servicing, refurbishment and embellishment. The evidence on which Chubb relied in this hearing was the same as that it relied on in the 2005 hearing, delivered in the form of a witness statement made by its commercial manager. Given that the parties' marks were identical, the hearing officer upheld Chubb's opposition and refused the application. Minimax appealed.

Yesterday Floyd J allowed the appeal. In his view the hearing officer had treated the evidence of Chubb's commercial manager as evidence of Chubb's continued use of the MINIMAX mark, concluding that there had been sufficient evidence of Chubb's goodwill and reputation in it. Since this was the wrong approach the court would review the evidence itself. Doing so, there did not appear to be any detectable proper basis for holding that Chubb had retained a sufficient residual reputation in the mark to be able to succeed in an action for passing off against Minimax's future use of the mark applied for. Any evidence of use was scant or trivial.

The IPKat guesses that Chubb must have been really annoyed with itself, having both lost control of the rather attractive MINIMAX mark and then being unable to stop its rival getting hold of it. But, in terms of log-term business strategy, was this opposition ever likely to achieve anything other than mild nuisance value? Merpel says, since Chubb could not in any event stop Minimax using its own name, was this a bit of a dog-in-the-manger opposition?

Dog in a manger here
Dog à manger (Korean style) here
Dog à manger (American style) here