09.09.2007
ECB Fails to Invalidate DSS “Money Printing Patent” at Federal Patent Court
As reported by IPKat, the German Bundespatentgericht (Federal Patent Court) has recently published its decision on the validity of a patent held by Document Security Systems for a method of printing money — or rather, a method for printing documents in a way wich makes it impossible to reproduce them with the help of devices using optical scanning (photocopiers etc.).
The decision does not concern Asian IP law per se, but we will report on it nevertheless — printing money is always an interesting subject.
DSS holds the European patent EP0455750, “Method of making a nonreplicable document”, for a method of superimposing invisible grid patterns of parallel lines onto documents in such a way as to create visibly discernable moiré patterns in copies of the document. The European Central Bank had filed for invalidation of this patent in Germany. The Patent Court dismissed the ECB’s arguments for invalidation and upheld the patent. As a results of its court victory, DSS intends to file patent infringement claims against security printers that print Euro banknotes, claiming that the banknotes use the patented method as a safety measure against photocopying.
DSS had sued the ECB before the Court of First Instance in 2005, which had been countered by eight invalidity trials filed against the patent in various jurisdictions throughout Europe.
The first of these trials was successful: On January 30, 2007, the UK High Court of Justice, Chancery Division, Patents Court, under Justice Kitchin, had ruled in favour of the ECB. The patent was proclaimed invalid, mainly for the reason that matter had been added later that had not been implicit in the patent application in the first place.
The second invalidity trial was decided by the Bundespatentgericht on March 27. Since August 29, the original text of the ruling has become available online (in German). We will give a brief summary of the content below.
The ECB based its claim of invalidity on two main reasons:
1. The moiré method described above (claim no. 1 of the patent) was not sufficiently disclosed in the orginal documentation submitted with the application (PCT application WO 90/08046). This argument was the basis on which the UK court had based its decision in January. The specific point in question is the method of superimposing grid lines onto the content of the document in such a way as to make them not readily visible to the unarmed eye, as opposed to just implementing grid lines as part of the original design of the document.
2. The second argument for invalidity is lack of novelty: The ECB claims that the method described in claim no. 1 of the patent was not new when the patent was filed. In order to support its point, the ECB had presented different publications on moiré effects in reprography, and different banknotes of an earlier date, supposedly protected by a similar technique.
The court explains that in the eyes of the technical expert, the method of superimposing lineations onto the original work to be copied was in fact disclosed in the original PCT application. One of the claims of this application describes producing a nonreplicable replicant document by producing lineations in image content of the original document. In the opinion of the expert, this process fully implies the claimed method of producing nonreplicable documents by intentionally superimposing lineations on image content of a document. The court refers to the previous decision of the UK Patent Court and emphasizes that it came to different conclusions based on the above reasoning.
Regarding the novelty of the invention, the court dismissed the examples presented by the ECB as not relevant to the specific feature of claim no. 1 of the DSS patent: Whereas the DSS invention demonstrated a method of superimposing gridlines in such a way as to make them invisible to the unarmed eye, the banknotes submitted by the ECB only contained visible lineations and hatching. For the same reason, the technical literature cited by the ECB fails to invalidate the patent in question.
The next invalidation decision is expected by the French Patent Court on September 12. We will be posting a follow-up as information on the French court decision becomes available.
BPatG, Document Securtiy Systems, DSS, Federal Patent Court, kopiergeschützte Dokumente, nonreplicable documents, Patente, patents
