The secret to success is to be able to differentiate between the relevant and the irrelevant.

Cyril Northcote Parkinson


We will keep you informed


Transformation into a partnership with limited professional liability

We are pleased to inform you that the Schiweck Weinzierl Koch GbR has transformed into a partnership with limited professional liability (Partnerschaft mbB) within the meaning of Sec. 8 (4) German Act on Partnership Corporations (PartGG) and now operates under the name:

Schiweck Weinzierl Koch Patentanwälte Partnerschaft mbB

The registration into the partnership register took place on January 13, 2017 ...

Future assignments, also within existing mandate relationships, will be treated from now on in the legal form of a Partnerschaft mbB. The legal relationships with our clients remain unchanged.
Based on the liability concept provided by law, clients of a Partnerschaft mbB benefit from considerably broader insurance coverage than clients of a partnership organised under the civil law (BGB company). Besides a higher minimum amount insured, the clients in particular can claim directly against the insurer.
In addition, the Partnerschaft mbB is fully liable, with its assets, for all obligations of the partnership. In return for this extended insurance coverage, personal liability of the managing partners of the partnership does not apply to the Partnerschaft mbB.
SWK’ attorneys are always at your disposal for questions regarding the transformation and/or the new liability concept.


Innovation Award for Climate and Environment 2015 (IKU 2015)

The “Bundesministerium für Umwelt, Naturschutz, Bau und Reaktorsicherheit (BMUB)” and the “Bundesverband der Deutschen Industrie e. V. (BDI)” awarded the Innovation Prize for Climate and Environment 2015 (IKU 2015) in the category “Environmentally friendly products and services” to the Wilhelms GmbH ...

The Wilhelms GmbH develops and commercializes plant growth promoting products based on mycorrhiza fungi whose addition to seeds saves large amounts of fertilizer. The mass-production suitable manufacturing method of mycorrhiza fungi is based on an intellectual property right of our client Symplanta GmbH & Co. KG, which is shareholder of the Wilhelms GmbH.
For the full report please see here.


Amendments of Rule 164 EPC and of Guidelines for Examination from 01.11.2014

On 1 November 2014 amended Rule 164 EPC entered into force. Amended Rule 164 EPC allows for increased flexibility in the prosecution of PCT applications, which comprise more than one invention and therefore do not comply with the requirement of unity of invention, during the European phase ...

In case of a PCT application, which contains more than one invention and on which the search was conducted by the EPO as International Searching Authority, according to the former practice the applicant could prosecute only an invention, which was covered by the International Search Report, during the European phase. Consequently, the claims had to be restricted to subject-matter which had been searched during the international phase. In case that the EPO did not act as International Searching Authority, a supplementary European search was performed only for the invention first mentioned in the claims. Independently of whether the EPO acted as International Searching Authority or conducted a supplementary European search, the applicant was not able to request search of any further invention, which was not covered by the international search or the supplementary European search, and to prosecute such invention in the original application during the European phase. Prosecution of such invention was only possible by filing a divisional application.

Amended Rule 164 EPC now permits to request search of such inventions comprised in the application, which were not searched by the EPO as International Searching Authority, during the European phase. Similarly, in case that the EPO did not act as International Searching Authority and performs a supplementary European Search, a search of further inventions comprised in the application can be requested according to the new practice. As a prerequisite, search of any further invention requires payment of an additional search fee within two months from a respective communication of the EPO. Consequently, during the European phase the applicant can prosecute any subject-matter comprised in the PCT application within the application originally filed.
For amended Rule 164 EPC please see here. For a notice of the EPO regarding the entry into force of amended Rule 164 EPC and further explanations of proceedings please see here.

Amendment of Guidelines for Examination

The Guidelines for Examination in the European Patent Office have been amended applying as from 1 November 2014. The new Guidelines consider, for example, the new practice regarding divisional applications and the search of further inventions during the European phase of PCT applications which do not fulfill the requirement of unity of invention.
For the new Guidelines please see here.

Case Law

Comments from our patent attorneys on recent trends


T 1915/10 Inventive step - No arbitrary selection if alternatives were not suggested as equally suitable

T 1915/10 is a recent decision from the 3.3.04 Technical Board of Appeals of the EPA and concerns the assessment of inventive step when the technical problem is solved by arbitrary choice ...

The patent in suit is drawn to an immunogenic composition comprising the Streptococcus pneumoniae proteins PhtD and Ply. The closest prior art D1 discloses PspA and Ply. The question asked by the Board was whether or not the skilled person would have been motivated to replace PspA by PhtD. Previously, the Examining Division decided that the skilled person looking alternatives would combine Ply of D1 with other known immunogenic pneumococcal proteins suitable for vaccine development. It would turn to D2 disclosing PhtD. The combination of Ply and PhtD is regarded as an arbitrary selection among the solutions that can be generated based on the disclosure of antigenic proteins of both D1 and D2. This decision was overruled by the Board which further clarified the meaning of arbitrary selection. It explained that arbitrary selection (T964/92, T350/95 and T939/92) is considered as obvious because it constitutes a choice from a large number of equally suitable alternatives to solve a formulated technical problem. Since the prior arts pointed out that not all the combinations containing Ply are equally immunogenic, the choice of the particular combination cannot be considered to be the result of arbitrary choice, and therefore must be regarded as inventive.
For the complete decision see here.


T 1441/13 Undisclosed Disclaimer/New documents in Applicant’s appeal

T 1441/13 is a recent decision from the 3.3.08 Technical Board of Appeals of the EPA. This decision concerns disclaimers for excluding subject-matter relating to the destruction of human embryos for performing the methods of the application-in-suit. Subject-matter relating to the destruction of human embryos for industrial or commercial purposes is prohibited under Rule 28(c) EPC ...

The Board examined if the subject-matter remaining in the claims, after the introduction of the disclaimer, was disclosed in the application-in-suit (G 1/03 and G 2/10). In this regard, the Board considered that techniques for obtaining human stem cells without destroying an embryo were available only after the priority date of the application-in-suit. Furthermore, publicly available human embryonic stem cell lines were considered to contravene Rule 28 (C) EPC. The reasoning was that also these cell lines are originally obtained using methods involving the destruction of a human embryo. Thus, according to the Board’s view, the subject-matter remaining in the claims after the introduction of the disclaimer was not available at the priority date of the application-in-suit (G 1/03 and G 2/10).

Notably, the Board elaborately assessed if the auxiliary requests and documentary evidence as filed with the Grounds of Appeal were admissible to the Applicant’s appeal proceedings. Due to this extensive assessment of the admissibility of documents, the question arises if for such one-sided proceedings (Applicant’s appeals) new standards for the admissibility of new documents/requests are to be established. Such extensive discussion about the admissibility of new documents has already been established for two-sided proceedings involving more than one party.
For the complete decision see here.


T 1400/11 No shift of defense of patent from opposition proceedings to appeal proceedings

In order to ensure a fair procedure and to expedite processing of the case, any party to first-instance proceedings has the obligation to facilitate the proceedings by submitting facts, evidence and requests in the manner required up to a certain point in the proceedings ...

Disregard of this duty may lead to a preclusion of evidence and requests which could have been presented in the first instance proceedings. This right was executed by the Board of Appeals in the underlying case since during the opposition proceedings in which the European patent of the appellant has been revoked due to lack of inventive step neither did the appellant respond to either of two communications under Rule 79(1) EPC nor did he request oral proceedings or file any requests, amended claims or submissions of any kind. During the appeal, the appellant argued that he did not present any requests or arguments during the opposition proceedings as he considered the grounds for opposition manifestly unfounded as the opponent relied on an alleged prior use so clearly inadmissible that there was no need for the appellant to discuss inventive step based on that allegation.

At the outset, the Board stressed that appeal proceedings are wholly separate and independent from proceedings before the administrative departments of the EPO in order to provide a judicial decision upon the correctness or incorrectness of a separate earlier decision taken by any such administrative department. The Board further referred to T936/09, emphasizing that it is not the purpose of the appeal to conduct the case anew and, therefore, the issues to be dealt with in appeal proceedings are determined by the dispute underlying the opposition proceedings. The Board further argued that, by his deliberately passive behavior the appellant prevented the opposition division from evaluating the admissibility of the documents which the opponent filed for support of his argumentation that the subject-matter of claim 1 of the patent did not involve an inventive step. Therefore, if the Board were now to evaluate the admissibility of those uncontested documents in light of the appellant’s arguments, which he presented for the first time in his statement setting out the grounds of appeal, the Board would be examining the appellant’s admissibility objections for the first time, rather than evaluating the decision under appeal about them, as the opposition division was not confronted with any such objections at any time. Due to a lack of an admissible request of the appellant the appeal was dismissed.
For more information see here.


Fame and honour: Our sucess is a profit for you

Acquisition International | 10.2016

AI Legal Award

Best European Patent Law Firm Award 2016We are proud to announce that our patent law firm has been awarded the title “Best European Patent Law Firm - Germany & Excellence Award for German Patent Law”. We see this title as an acknowledgment of our daily work which is geared to the needs and interests of our clients ...

In this respect we live a culture of client-oriented, professional and individual services, which has been honored with this award.

Corporate INTL Magazine | 01.2016

Global Award

Chemistry Patents Law Firm of the Year in Germany Award 2016We are very proud that for the third time in succession the Corporate INTL Magazine has awarded us the title “Chemistry Patents Law Firm of the Year in Germany” ...

This award particularly appreciates the quality of our work in der field of national and international intellectual property and motivates our Team to satisfy our client’s expectations also in the future with high commitment and individual services.

Acquisition International | 10.2015

Legal Award

European Corporate Excellence Award 2015We at Schiweck Weinzierl are honored and very pleased that the title “Best for Life Science Patents Prosecution - Germany” was awarded to us and that the work for our clients is appreciated in this way ...

Also in the future we strive to continue our client-orientated course with quality and highest commitment to do justice to this award.

Acquisition International | 10.2015

Legal Award

Acquisition International Legal Award 2015We are pleased to announce that this year Schiweck Weinzierl was awarded the title “Best for Life Science IP Law - Germany 2015” ...

We see this award as a confirmation of our performances and achievements in the field of national and international intellectual property. At the same time this award motivates us to justify the expectations of our clients also in the future by professionalism and high-quality work.

Corporate INTL Magazine | 01.2015

Legal Award

Corporate INTL Legal Award 2015After being awarded the title “Chemistry Patents Law Firm of the Year in Germany” in 2014, we were very pleased that this title was also awarded to us for 2015 ...

We see this title as an honor for the work and commitment of our team to the interests and concerns of our clients. At the same time it is an incentive for our team to continue to justify this title through high quality work and client oriented individual service, which strengthens us further in our expansion oriented course.

Acquisition International | 05.2014

Intellectual Property Award

We all at Schiweck Weinzierl Koch feel honored by this award which comes at a time of strong growth for our team. We believe that also this award reflects the quality and excellence of the work and service we provide for our clients, and we will do our best to justify this honor also in the future ...

The 2014 International Intellectual Property Awards recognise the achievements of those involved in driving the intellectual property market. The awards recognise lawyers, agents, consultants, advisers and service providers operating in the world of intellectual property and are most crucially, nominated by their clients and their peers.

The awards are given solely on merit and are given to commend those most deserving for an exceptional level of service over the last 12 months.

Corporate INTL Magazine | 01.2014

Global Award

Corporate INTL Global Award 2014We are pleased to announce that our law firm was awarded the title “Chemistry Patents Law Firm of the Year in Germany 2014”. The award is accompanied by a strong expansion of our team and motivates us for future successes ...

The awards commemorate those who have been successful over the past 12 months and who have shown excellence not only in expertise but in service. For all awards the Corporate INTL Magazine has undertaken detailed research via independent research and editorial teams.

The awards therefore promote leading firms in their chosen specialisms throughout the world. As Corporate INTL magazine is read by business leaders, investors and advisers globally it’s a huge accolade for those firms that are awarded as winners in their specific categories.