JUVE Patent

Procedure for issuing preliminary measures at the UPC

The Unified Patent Court started its work on 1 June 2023. Just 22 days later, the Düsseldorf local division issued the first preliminary measures. This illustrates the outstanding importance of preliminary injunctions in patent law. Applicants can use them to enforce their rights particularly quickly. Conversely, a defendant may be threatened with the loss of their business within a very short time. For this reason, it is important for the parties to understand the procedure by which the UPC issues preliminary measures. This article explains the procedure and the principles of the court‘s decision-making, as well as differences and similarities to the German (national) preliminary injunction procedure. (Benedikt Walesch, Kather Augenstein, GRUR Patent 2023, page 197)

09 November 2023

ASI and AASI – the status in German patent litigation today

So-called anti-anti-suit injunctions (AASIs) and anti-suit injunctions (ASIs) have a rather short history in German patent litigation, with the Regional Court Munich issuing the first AASI in a patent case in 2019. Since then, both ASIs and AASIs in Germany have been associated mainly with licensing disputes for standard essential patents. Recently, however, the Regional Court Munich issued an AASI in a life science case (GRUR-RS 2023, 24701 – Temporary Restraining Order) which is the first published decision confirming that AASIs from German courts are not confined to SEP disputes, and that German courts will apply the same legal standards known from SEP disputes to grant AASIs outside of SEP litigation. Although the wave of AASI decisions from German courts seems to have subsided, it appears that AASIs are an instrument of German patent litigation that are here to stay. The purpose of this article is to provide a brief overview on where German patent law stands on ASIs and AASIs today, to look beyond the borders of German patent law to the Netherlands and the WTO, and to provide a brief outlook on what can be expected for ASIs and AASIs in German patent disputes. (Corin Gittinger/Christian Rubenwolf, Freshfields Bruckhaus Deringer, GRUR Patent 2023, page 212)

07 November 2023

Must the allocation of competences among the UPC divisions conform to the Brussels Ibis regulation?

Different views have emerged in literature as to whether the allocation of competences among the divisions of the UPC pursuant to Art. 33 UPCA must conform to the principles of the Brussels Ibis Regulation — an issue that is material, e.g. when the central division is called upon to hear an infringement action. This piece presents the conflicting arguments, and comes to the conclusion that the Brussels Ibis Regulation is not to be considered when determining a division’s competence. (Leonard Hollander, Hogan Lovells, GRUR Patent 2023, page 205)

06 November 2023

On the international jurisdiction of the UPC

The University College London (UCL) has established an annual lecture in honour of the late Sir Hugh Laddie (Sir Hugh Laddie Lecture). This year´s lecture was held by Rian Kalden, presiding judge at the second panel of the UPC Court of Appeal. We are convinced that her lecture provides rich material for thought and discussion. We, the editors, have limited our work to some references concerning the court decisions and legal instruments referred to by the author. (Rian Kalden, UPC Court of Appeal,GRUR Patent 2023, page 178)

03 November 2023

Writs of Protection at the UPC - Initial Practical Tips and Experiences

With the start of the Unified Patent Court, the question of whether it is advisable to file protective letters has become an important issue. This article highlights the differences and similarities between protective letters in German patent infringement proceedings on the one hand, and in proceedings before the Unified Patent Court on the other. It addresses selected practical questions that arise in connection with protective letters before the Unified Patent Court, in particular the handling of confidential information. Finally, the article provides practical instructions on drafting and filing protective letters in the case management system. (Clara Berrisch; Hoyng ROKH Monegier, GRUR Patent 2023, page 191)

02 November 2023

Gathering evidence before the UPC

The following article takes a closer look at gathering evidence before the UPC. Therefore, the rules of evidence of the UPC Agreement (UPCA) and the UPC Rules of Procedure (RoP) are presented and analysed with regard to the burden of proof, the various measures of gathering evidence and the right timing. The means of evidence before the UPC include all means such as written evidence and testimonial evidence and include, inter alia, rules on disclosure and confidentiality measures. The article concludes that the different jurisdictions are united within the UPC and that the UPC provides a balanced system that will develop its practical standards and benchmarks in the coming proceedings. (Stanislas Roux-Vaillard, Miriam Gundt, Ruud van der Velden, Lea Gröblinghoff, all Hogan Lovells GRUR Patent 2023, page 209)

02 November 2023

Milan or Madrid, as long as it's FRAND again?

In handing down its "FRAND Defence II" decision, The Federal Court of Justice has provided clear guidelines for the parties' obligations in negotiations on standard-essential patent portfolios and thereby eliminated a great deal of uncertainty concerning the FRAND defence. At the same time, however, this has also raised new questions for legal practitioners. For example, whether and how a patent infringer can still assert the FRAND defence if they did not initially fulfill their FRAND obligations. (Lars Hessmann, Jonathan Hechler, both Bird & Bird, GRUR Patent 2023, page 186)

02 November 2023