Danish case law regarding patents shows that in a vast majority of cases, the Danish Board of Appeal (BoA) for Patents tend to follow the recommendation of the DKPTO. This has caused reason to pose the question of whether the Danish BoA for Patents tends to put too much weight on the recommendations of the DKPTO and too little weight on the submissions of the parties.
The Danish BoA for Patents has recently pronounced an interesting decision in case no AN 2011 00037 regarding the Danish part of European patent no. 1639556 (the Patent) relating to an electronic parking disc, showing that this is, however, not necessarily the case.
Following re-examination proceedings the Danish Patent and Trademark Office (DKPTO) had declared the Patent invalid in its entirety for lack of novelty. No new prior art was brought forward, and the appeal was thus decided based on the same prior art as the re-examination proceedings.
Nonetheless, the Danish BoA for Patents came to the opposite conclusion and thus chose to remit the case to the DKPTO for reinstatement of the Patent in its entirety.
Particularly, in the present case the Danish BoA for Patents, as virtually always, requested an opinion from the DKPTO. The DKPTO stated in their opinion that they maintain their previous assessment and conclusion, and recommended to the Danish BoA for Patents that the Patent be declared invalid in its entirety. Furthermore the DKPTO stated that the submissions made by the parties during the appeal proceedings did not cause reason for any further remarks.
As mentioned, the Danish BoA for Patents chose to go against the recommendation of the DKPTO. This confirms that the Danish BoA for Patents takes their time to listen both to the DKPTO and to the parties of the case and based thereon form their own opinion on the case.
Hence, the present decision shows, that it may actually be worthwile to appeal a decision made by the DKPTO.
Troels Peter Rørdam, European Patent Attorney and Certified Danish Patent Agent
The decision of the DKPTO Board of Appeal for Patents is available (in Danish) here.