On May 28, the German Federal Parliament enacted the law to simplify and modernize patent law. The patent law modernizing law is to improve the legal position when applying for patents and trademarks and to simplify the appeal system. Changes relating to patent invalidity processes and to employee invention rights are the main content of this law. The most important changes in detail:

In the first instance before the Federal Patent Court, the court must in the future expressly refer the parties to questions, which are relevant for the court decision, provided that the points of view, which are to be discussed, do not already seem to be obvious after having been presented by the parties. The patent court can set a deadline for the parties within which they can present their opinion relating to the instruction by means of new requests or additions to the statement of facts and within which they can also present concluding statements. By setting the deadline, opposing party and court are protected from a surprising new submission, which until now was in many cases only presented during the oral hearing. Oftentimes, this had led to an extension of the duration of the proceedings.

The appeals process before the Federal Court of Justice against decisions by the Federal Patent Court in invalidity matters are to proceed more quickly as well. In particular, it is no longer absolutely necessary to appoint an expert. In the future, the central concern of the appeal is to check the first-instance decision for errors, as it is common according to the code of civil procedure.

The proceedings in the case of employee inventions are also simplified. Until now, employer and employed inventors had to submit several declarations having different deadlines so as to make a claim. In business practice, these formalities have led to errors time and again. In the future, a so-called claim presumption is to apply: according thereto, employee inventions automatically transfer to the employer four months after the filing date, unless the employer releases the invention beforehand.

The law to modernize patent law furthermore introduced claim fees for patent applications. They are 20 Euro for each claim over eleven, when electronically filing the application. The first ten claims are included. When filing a paper copy, the claims cost 30 Euro each.

2. Guideline decision by the Federal Court of Justice “Olanzapin” with reference to the novelty of an invention

In invalidity appeals proceedings in the matter EP 454 436 “Olanzapin”, the Federal Court of Justice overruled the first-instance decision of the Federal Patent Court, by means of which the patent was cancelled because it lacked novelty. In the decision, the Federal Court of Justice explained its current case law relating to novelty and adapted it to the case law of the European Patent Office. The Federal Court of Justice thereby states that it is material to the disclosure content, what can be learned from a document “directly and clearly” from an expert point of view. Directly and clearly disclosed can also be what is not expressly mentioned in the patent claim and in the description, but which, from the point of view of the person of skill in the art, however, is a matter of course for the explanation of the protected teaching and which thus does not require special disclosure, but which is “implied”.

In this case, the Federal Court of Justice was not able to establish that the individual connection Olanzapin is implied to the person of skill in the art. In summary, the Federal Court of Justice finally states that disclosing a chemical structure formula on principle does not disclose the individual connections, which fall under this formula.

3. Domain law: Federal Court of Justice Decision ahd.de

With the decision “ahd.de“, the Federal Court of Justice decided in how far a firm can defend itself against third parties registering and using its own trade name as a domain name.

In the concrete case, the plaintiff, who operated in the hard and software field, used the abbreviation „ahd“ as company name since October 2001. In addition to several thousands of domain names, the defendant also had a registration for the domain “ahd.de“ since May of 1997 for the purpose of selling it or to offer its use in return for payment. While only a “construction site“ sign could be recalled under this domain prior to the middle of 2002, at the beginning of 2004 the defendant included contents on the page, which referred to her own services, such as the provision of email addresses or the development of websites. In addition to consenting to the cancellation of the domain name, the plaintiff also demanded from the defendant the desist of the use of the term “ahd” for offering these services.

The Federal Court of Justice clarified that in the case of a name or labeling right, which was only established after the registration of a domain by third parties, the owner of the rights does not have an all-inclusive cancellation claim, but only an injunctive relief in the case of relevant use by the domain owner with reference to competition law, thus in the case of the use of the term in the same market segment. The very registration and the holding of the domains per se is not in violation of the law, because this does not represent a use and an infringement of labeling rights. The firm, who was taking action, uses the abbreviation “ahd“ since October of 2001 for its own firm. The defendant owns the registration for the domain name ahd.de since May of 1997, but only uses it since the summer of 2002, wherein services, such as email service and the development of homepages have also been offered under the domain in February of 2004. The plaintiff demanded the desist of this offer and the release of the domain. The plaintiff was successful with this demand before the Regional Court Hamburg (Decision of May 26, 2005, file number: 315 O 136/04) and before the Higher Regional Court Hamburg (Decision of July 5, 2006, file number: 5 U 87/05). The defendant then appealed.

The Federal Court of Justice delivered a Solomonian judgment (dated February 19, 2009, file number: I ZR 135/06): The defendant is not allowed to offer the mentioned services under the domain, but must not cancel the domain. The Federal Court of Justice decided that the firm, who was taking action, had acquired a right to the term „ahd“ after the registration of the domain, on the basis of which the plaintiff was able to prohibit the defendant from using the letter combination “ahd” for the goods and services within the scope of protection of its trade name. However, due to the fact that the labeling right had only been established after the registration of the domain name by a third party, there is no claim to the cancellation of the domain. The Federal Court of Justice thereby refers to its previous decision relating to afilias.de (Decision of April 24, 2008, file number: I ZR 159/05)

The domain owner may not use the domain in such a manner that the labeling rights of the labeling right owner are infringed. However, the registration of the domain per se does not represent an infringement of the trade name of the plaintiff in such cases. The fact that the plaintiff was not able to use the domain ahd.de also does not represent undue competitor interference. On principle, the plaintiff must accept that it cannot register the domain, because it had only started using the term “ahd“ after the defendant had registered the domain.

At any rate, this decision, which continues the known case law of the Federal Court of Justice, does not open the floodgates to grabbers. The Federal Court of Justice differentiates in a highly practice-oriented manner between the priority of the domain registration and the establishment of a labeling right.

4. Registration of the name of a city by an unauthorized party “solingen.info“

In its Decision I ZR 201/03 “solingen.info”, the Federal Court of Justice comments with reference to whether an area municipality – here the city of Solingen – is entitled to the desist of the use of a domain „solingen.info“ encompassing its name and whether it can additionally demand the desist of the domain “solingen.info”.

The defendant, a limited liability company, operated an internet portal under the domain “solingen.info”, with which it offers information relating to the city and the region of Solingen.

The City of Solingen has asserted that its right to a name was being infringed upon by the registration and the use of the domain “solingen.info”.

With reference thereto, the Federal Court of Justice stated that the City of Solingen rightly asserted its injunctive relief against the use of the domain “solingen.info”, because the defendant infringes the right to a name of the City of Solingen by registering and using the domain “solingen.info”.

An unauthorized presumption of a name under § 12 Sentence 1, second alternative of the German Civil Code, applies when a third party, which does not have a right to use a name, uses the same name as the bearer of the name without being authorized to do so, thus causing a confusion of affiliation and leading to protectable interests of the authorized party to be infringed. In the event that a foreign name is used as an internet address, these conditions generally apply (BGHZ 149, 191, 199 – shell.de). This also applies to the use of the name of an area municipality, having its own right to a name for its identification according to § 12, German Civil Code. Due to this identification, it can proceed against an unauthorized third party under the same premises as another bearer of a name.

The defendant asserted that the traffic on an internet address, which is formed with the top-level domain “info” would not expect information from the person identified in the second level domain, but rather only information about said person.

The Federal Court of Justice was not able to agree with such an argumentation. Accordingly, a confusion of affiliation in the case of an internet address is not ruled out in that the name of the area municipality (here Solingen) is linked with the top level domain “info”.

According to the opinion of the Federal Court of Justice, when affiliating the domain name to the bearer of a name, the internet user will not orientate himself on the second level domain „solingen“ in the instant case, because the top level domain “info“ is not suitable to change anything about the affiliation of the term “solingen“ to the German city of the same name as the name bearer.

Even though, according to the opinion of the Federal Court of Justice, it cannot be ruled out that general, top level domains, which are not country-specific, counteract an affiliation to certain name bearers when they cannot be attributed to the typical users of such domains. For example in the case of the top level domain “biz“ (for business) or ”pro” (for professional), this cannot be ruled out at the outset.

However, the top level domain “info” does not belong to such domains. It is neither related to lines of business nor to countries and also does not limit the circle of the name bearers by means of other criteria. According to this, confusion of affiliation based on the isolated use of the second level domain “solingen” does not only exist in the case of the combination with the country-specific top level domain “de”, but also with “info”. In particular, the internet user does not gather from the use of the top level domain “info” that this is information offered by a third party and not by the name bearer.

With this decision, the Federal Court of Justice follows its line, according to which the right to a name according to § 12 of the German Civil Code makes it possible for cities, communities or other municipalities to effectively prevent the unauthorized use of their respective names in the internet addresses of third parties. This also prevents stockpile registrations of internet addresses by unauthorized third parties, who want to get protection for internet addresses comprising city names for themselves, at least when there is still the suspicion that the internet address will still cause the internet user to be confused about the affiliation.