Last week FOSS Patents carried an interesting article about the impact that the original iPhone Keynote presentation has had on the validity of one of Apple’s own patents. Follow up press reports (e.g.  this one) have focused on the fact that the “rubber band” patent has been invalidated on the basis of this video disclosure. However, the original article contained some points of interest with respect to grace periods in the US and Europe and the effect that the German court decision on the “rubber band” patent may have on Apple’s utility model in Germany.

Curiosity suitably piqued IPcopy took a quick look at the case. For ease of reference we also produced a handy timeline of events so you can see what happened and when.

The European patent in question was Apple’s EP2059868 and the case was heard in the Federal Patent Court of Germany. Lining up on the other side of the fence were Samsung and Motorola Mobility (i.e. Google).

The patent lists seven different priority documents with filing dates ranging from 6 September 2006 until 30 August 2007 (a day before the filing date of the PCT application that eventually gave rise to the European patent at issue). According to Wikipedia the iPhone was first disclosed on 9 January 2007 at Macworld 2007 (see YouTube clip below). This means the public disclosure of the phone falls in the middle of the priority filings – see timeline below.

In parallel to filing a PCT application it would seem that Apple also filed a German utility model, DE212008000001. This utility model also had seven priority claims, some of which overlap with the priority claims in the EP patent (specifically US60/937,993) .

A quick word on grace periods. In the US there is a 12 month grace period, i.e. an invention can be made public and this will not prevent a valid patent application being made within 12 months from the earliest public disclosure. In Europe there is no grace period but for German utility models there is a 6 month period.

Now, according to the FOSS article, the US patent is not impacted by the video presentation because of the 12 month grace period in the US. The European patent however was invalidated on the basis of the presentation. This means that EP priority documents (1, 2, 3, 4) cannot contain the “rubber band” feature as they pre-date the Keynote. This leaves priority documents (5, 6, 7) to consider.

Priority document 7 and the EP filing date itself are more than 6 months after the keynote. The FOSS article however suggests that the German utility model is still valid because the grace period extends back to before the presentation. The only priority documents for the EP patent that fall within this time period are priority documents 5 and 6. Only one of these (US60/937,993) is also a priority document for the utility model and so presumably the rubber band feature must have been first disclosed in this document. Anyone care to take a look?

What’s interesting about the case is that in the course of the Federal case Apple successfully managed to argue it was novel and inventive over two particular prior art documets (the “Lira” patent appliction which published on 2 October 2003 and the “Launchtile” concept which has been around since the middle of the 2000s). This wasn’t enough to save the EP patent because of the impact of the Keynote presentation. However, because the Keynote presentation can be discounted from the validity assessment of the German utility model, what Apple has effectively achieved is the confirmation that their German uility model is valid because the two closest prior art documents have already been considered by the Federal Court and found not to anticipate or render obvious the EP patent .

So, Apple has managed to pull something from the fire in Germany. It’s interesting to take away from all this that no matter how big and patent savvy you are, sometimes you forget one of the most important rules in the patent world – you must file your patent applications before you make any public disclosures!

Mark Richardson 4 October 2013