Method of displaying image during surgery patentable, rules BGH

The German BGH overturned a decision by the Federal Patent Court (Bundespatentgericht) that refused to grant a patent for a method of combining images for use in heart surgery. In its decision of 31 August 2010 (the grounds just became available now), the BGH held that the method was not excluded from patentability under art. 2a(1)(2) German Patent Act (corresponding to art. 53(c) EPC 2000, which excludes methods for treatment of the human body by surgery from patentability).

The application, filed 17 December 2003 (DE 103 59 317) by Siemens claims a method to combine images to guide the surgeon during heart surgery. Basically - and this is a blog post, so excuse the simplification - the application claims the steps of creating a first image (3) using a non-invasive imaging method and locating, marking and highlighting the visible pathological areas (4), and then to combine this enhanced image with the live feed (8) of the imaging method used during surgery, this live feed showing the inside of the organ and the tip of the surgical instrument (catheter). The schematic drawing on the right shows a diagram of the invention (btw, you can click on it to enlarge if it is too small).

Both the Patent Office and the Federal Patent Court refused to grant the patent because it claimed a method for the surgical treatment of the human body.

The BGH disagrees. Pointing to Enlarged Board of Appeal decision G1/07, page 73, it explains that the mere fact that a method - such as an imaging method - may be used advantageously during surgery does not make it a surgical method (tytoc collie's take on G1/07 can be found here). The BGH distinguishes the application in case from the application at issue in G1/07 on the grounds that the application at issue in G1/07 required the injection of a contrast agent into the heart, which was a surgical intervention, while here, the surgeon was not instructed at all on how to direct the catheter. While the claimed method presupposes the introduction of a catheter into the heart, it only claims the imaging method (para. 15 - the BGH notes that there is a close link between the surgical procedure and the imaging method, but nonetheless insists that the claims distinguish between the two).

The BGH goes on to note that the claimed method is also not a diagnostic method excluded from patentability as it only supports diagnosis, it does not inform the person skilled in the art on how to reach a diagnosis based on the images. The case is sent back to the Federal Patent Court to decide on inventive step.

BGH: if it looks the same, it must have the same quality

An interesting case was decided by the German BGH on 15 April of this year (the grounds for the decision only became available on 29 October). The plaintiff Waldemar LINK GmbH & Co. KG had marketed since 1982 a femur prosthesis (hip replacement) under the brand "SP II". This femur prosthesis has a characteristic S-shape (see red line in the image, for nit-pickers, from this angle it's an inverted S-shape) that has many benefits and was covered by a patent that expired. It is very successful and enjoys a high reputation for quality in the market. After expiration of the patent, a competitor started selling a hip replacement under the label "AS PLUS" which resembles very closely the "SP II" model of the claimaint.

Waldemar LINK GmbH & Co. KG brought suit against the competitor based on unfair competition. Both first instance courts (LG and OLG Hamburg) dismissed the claims.

There was no likelihood of confusion between the products because of the different signs ("SP II" versus "AS PLUS") they were marketed under.

While the SPII product enjoyed "wettbewerbliche Eigenart" (I will not try to translate this concept), this could not form the basis for an injunction given the technical necessity of the form (para. 22).

Post-sale confusion was also ruled out under the particular circumstances; a surgeon is expected to carefully plan an operation and is highly unlikely to just take the "wrong" prosthesis simply because it looks similar (I certainly hope so! Those interested can find a guide on how to implant the replacement here - don't do this at home, lawyers.).

But, and here it gets interesting, the BGH held that (para. 51):

Da der gute Ruf des Produkts der Klägerin auf dessen Qualität beruht, wird er unangemessen beeinträchtigt, wenn ein nahezu identisches Produkt nicht denselben oder jedenfalls im Wesentlichen denselben Qualitätsmaßstäben genügt, die der Originalhersteller durch seine Ware gesetzt hat.

I'll try a translation:

Because the good reputation of the plaintiff's product is based on its quality it is inappropriately impaired when an almost identical product does not meet the same, or at least essentially the same, quality standards that the manufacturer of the original product has set by his product.

Because the lower court had not made any findings on the quality of the competitor's product, the case was sent back for additional findings.

In other words: you can market a product that looks very similar to the market leader, but only if it in fact is very similar (quality-wise) to the market leader. A very interesting development, and it reminds me of the thesis advanced by Roland Mallinson (Taylor Wessing) and Andreas Lubberger (Lubberger - Lehment) at the MARQUES Conference in Berlin that if a look-alike creates an association with a market leader, this is a form of comparative advertising and as such only permissible if the products are indeed comparable - also quality wise. And suddenly, courts have to go on a fact finding mission regarding the quality of look-alikes...