JUVE Patent
Legal news ticker in cooperation with GRUR
Legal news ticker in cooperation with GRUR
JUVE Patent and GRUR Patent bring you the latest news and developments concerning European and UPC patent law.
May 2025
Spotlight on: The language of proceedings before the Unified Patent Court – Part 1
The language of the proceedings was one of the key issues on the way to establish unitary patent protection. It remains one of the ‘ongoing litigation issues’ in court practice to date. The first part of this two-part essay examines the legal background and illustrates how the language of proceedings is to be determined. The second part will then focus on the practically relevant questions regarding the change of the language of proceedings.
(Holger Hiss and Julian Fischer, GRUR Patent 2025, page 241)
In practice, there are competing situations between the patent owner’s intellectual property rights and the position of his contractual partner under private law. In addition to the mere use of the protected subject matter of the contract by the purchaser, warranty rights such as self-performance or a right to self-help sale derived from dispositive law should be considered. In the absence of an explicit provision, such as the granting of a license, the question nevertheless arises as to whether the patent always prevails over contract law. Based on the manifestations and prerequisites of patent law grants of use – from the license to simple consent – typical competing situations are described on the basis of case studies and suggestions for solutions are developed.
(Sebastian Wündisch, GRUR Patent 2025, page 220)
The Editor’s Choice – UPC (Court of Appeal), order of 18.9.2024
The Luxembourg Court of Appeal's decision pertains to the change of the language of the proceeding from German to English. The Court of Appeal determined that, given the original institution of the proceedings in German, the language of the proceedings should be English to ensure fairness and because it is the language of the patent in suit. The parallel national cases of the parties are not relevant for determining the language of the proceedings.
(Selin Russo, GRUR Patent 2025, page 196)
The Editor’s Choice - CJEU (Grand Chamber), order of 25.2.2025
In its BSH Hausgeräte decision, the CJEU clarifies a question of international jurisdiction that is particularly relevant for cross-border patent litigation. The court seised in the defendant’s domicile does not lose jurisdiction as a whole in case the defendant raises a plea of invalidity. It may stay proceedings or rule with inter partes effect for patents valid in third states.
(Roland Müller and Sebastian Dworschak, GRUR Patent 2025, page 188)
“Export” of a national prior right to use to other UPCA states?
Pursuant to Art. 28 UPCA, the possibility of the defendant to defend itself with an internal right of prior use in UPC proceedings is governed by national law. The article examines, using the examples of Germany, France, Italy and the Netherlands, whether and under what circumstances the prior user manufacturing in the state of the seat of the UPC division seised can also invoke an internal right of prior use for its distribution abroad.
(Michael Nieder, Tilman Pfrang and Jasper Werhahn, GRUR Patent 2025, page 184)
Better late than never? Delay/preclusion in the UPC
The longer the UPC has been established, and the more proceedings are progressing, the more frequently the question of late filing or preclusion of arguments by the parties will arise. In complex cross-border proceedings, it is well known that something (supposedly) highly relevant almost always happens somewhere, and sometimes a focus of the discussion may simply shift in the course of a legal dispute. But for how long will this be taken into account at the UPC? The following article offers an introduction to the practice.
(Oliver Jan Jüngst and Moritz Schroeder, GRUR Patent 2025, page 179)
In the past year, the Arbitration Board for Employee Inventions again published a large number of settlement proposals dealing with a wide range of aspects regarding employee invention law. In addition, the much-discussed decision “DABUS“ of the German Federal Supreme Court, which deals with the use of artificial intelligence, may have an impact on employee invention law. Another recent decision of the German Federal Supreme Court concerns the claim according to Section 23 of the German Employee Invention Act. This article reviews some of the recent decisions.
(Anja Bartenbach, GRUR Patent 2025, page 172)
Current German SEP/FRAND practice – an overview with a focus on the "Sprachsignalkodierer" decision
A lot has happened in the SEP/FRAND universe in the last months. The Court of Appeal for England and Wales has opened an avenue for declaratory judgments on interim FRAND licenses in a series of three decisions closely following one another. The Commission has intervened in a Munich case with amicus curiae observations on its view concerning the correct interpretation of the CJEU’s Huawei/ZTE judgment. The Munich Higher Regional Court has reacted to this intervention with an advisory decision to the parties on how the court currently plans to go forward in the ongoing proceedings – meanwhile it has followed up on this decision in its recent judgment of March 20, 2025. Last but not least, the UPC (Mannheim and Munich Local Division) have issued their first SEP/FRAND judgments. This article focuses on the Munich proceedings and discusses the advisory decision of the Munich Higher Regional Court – the recent judgment follows up along the lines of that earlier decision. All these considerations serve as a springboard to further consider perspectives for German practice as well as the possible need for another reference to the CJEU.
(Matthias Leistner, GRUR Patent 2025, page 136)
Annual review 2024: Decisions of the Boards of Appeal of the EPO (part 2)
The report provides an overview of noteworthy decisions issued by the EPO Boards of Appeal in 2024. In view of the large number of decisions issued in 2024 (over 1,700 decision and 3,000 cases settled), this review is based on decisions relating only to substantive patent law and is divided into two parts. The first part was published in the previous issue; this is the second part.
(Kemal Bengi-Akyürek and Frédéric Bostedt, GRUR Patent 2025, page 124)
European Commission fined Teva for violating antitrust law by playing the “divisional game”
In November 2024, the European Commission fined Teva € 462.6 million for delaying competition for ist blockbuster drug Copaxone. Inter alia, Teva was accused of having filed multiple divisional patents of questionable validity and tactically withdrawing them shortly before a likely negative final decision, while continuing to pursue similar divisionals. The Commission finds that this is a misuse of the patent system which can lead to penalties and damages under Art. 102 TFEU.
(Thorsten Bausch, Mike Gruber and Melanie Schain, GRUR Patent 2025, page 134)
On June 1, 2023, the Unified Patent Court (“UPC”) finally opened its doors and has since received more than 700 cases. After 21 months, more than 850 orders and decisions have already been issued by the Court of First Instance and the Court of Appeal, which demonstrates its popularity and its role as a unified court in European patent law. As before, numerous procedural orders continue to be published, strengthening the case law on procedural issues. There is also a significant increase in the number of decisions on the merits in infringement proceedings and the associated counterclaims for revocation as well as the final decisions and orders of the Court of Appeal. It therefore still seems useful to provide an overview to facilitate access to the Court's guidance on the UPC Agreement (“UPCA”) and the Rules of Procedure (“RoP”).
(Klaus Haft, Sabine Agé, Giulia-Isabella Otten, Natali Goginashvili and Alix Fourmaux, GRUR Patent 2025, page 106)
Heading for a schism in patent law? – The decision in T 56/21
In its remarkably detailed decision T 56/12, the EPO’s Technical Board of Appeal 3.3.04 stated that the EPC provided no legal basis for requiring applicants to adapt the description to amended patent claims during the grant procedure. What seems to be good news to the practitioner at first glance turns out to be a Greek gift when looking more closely at the decision’s reasons. As the Board of Appeal explains, the only potential legal basis for the demand of an adaptation of the description seems to be Art. 69 EPC, which it yet describes (in lengthy explanations) as irrelevant to the proceedings before the EPO (except in an examination of the extension of the scope of protection in opposition proceedings (Art. 123(3) EPC)). In this regard, the Board of Appeal 3.3.04 has set sails for a direct collision course with the Unified Patent Court, thereby focusing on a legal issue that is currently pending before the Enlarged Board of Appeal under G 1/24.
(Christof Keussen, GRUR Patent 2025, page 131)
Redefining remedies: the Paris Court of Appeal applies proportionality to deny a permanent injunction
On 16 October 2024, the Paris Court of Appeal denied corrective measures as well as a permanent injunction in main patent proceedings despite finding infringement and validity because of proportionality considerations. This is a rare instance where the court did not grant an injunction automatically, but looked into the particularities of the case at hand and ultimately deemed the injunction disproportionate. Although the principle of proportionality is fundamental in the EU and integral to Directive 2004/48/EC (IPRED), it is to date seldom used to counter permanent injunction requests.
(Abdelaziz Khatab, Oscar Lamme and Peter Meyer, GRUR Patent 2025, page 138)
Annual review 2024: Decisions of the Boards of Appeal of the EPO (part 1)
The report provides an overview of noteworthy decisions issued by the EPO Boards of Appeal in 2024. In view of the large number of decisions issued in 2024 (over 1,700 decision and 3,000 cases settled), this review is based on decisions relating only to substantive patent law and is divided into two parts. This first part looks at the topics of priority entitlement (section I), novelty and added subject-matter (section II), and inventive step as regards alternative solutions (section III), while the second part will be published in the next issue and will address the latest decisions on claim interpretation, adaptation of description, the consequences of G 2/21, technicality of medical data, exceptions to patentability, and the new referral case G 2/24 on the status of the intervener in appeal proceedings.
(Kemal Bengi-Akyürek and Frédéric Bostedt, GRUR Patent 2025, page 68)
UPC Court of Appeal Case Law Review, Issue No. 1 – Need for speed: the “front-loaded” nature of UPC proceedings
Proceedings before the UPC follow a “front-loaded” model, requiring detailed initial pleadings to ensure quick decisions. This paper examines several decisions of the Court of Appeal since June 2023 to assess how they applied the “front-loaded” principle in practice. The case law review highlights tensions between the efficiency goals of the UPC and the need for a flexible and proportionate approach to cases. It concludes that an overly rigid approach against latefiled arguments and evidence risks undermining procedural fairness and cost-efficiency and advocates instead for a balanced, case-by-case application of the procedural rules.
(Giovanni Trabucco, GRUR Patent 2025, page 74)
On the origin of the first infringement actions before the UPC
28 of the first 79 infringement actions filed in the first year before the UPC have a “prior history”, i.e. a parallel infringement action previously filed in an UPC country, usually Germany. However, this cannot explain the absolute decline in infringement actions; the fact remains that infringement actions in Germany continue to decline.
(Aloys Hüttermann and Eric Sergheraert, GRUR Patent 2025, page 81)
Dornis and McGuire, both recognised experts in private international law, have recently commented in this journal on the legal bases of decisions and orders of the Unified Patent Court (UPC) for European patents (EP), i.e., on the rules of patent infringement under the UPCA. They come to different conclusions. Admittedly, the Court of Appeal in the Fives/Reel case and several Local Divisions have already answered the question whether the UPCA contains a civil-law basis for infringement claims in the positive sense in a concordant and therefore binding manner for the time being. However, the UPC’s legal arguments supporting this answer are still missing, which is why the two protagonists mentioned could qualify this answer as mere legal assertions. Therefore, it makes sense to examine their own arguments. This article serves this purpose.
(Winfried Tilmann, GRUR Patent 2025, page 51)
The right of prior use in the UPC infringement proceedings – nationally limited but internationally effective?
A judgment of the UPC for infringement of a European patent or a unitary patent is generally valid in all UPCA states in which the patent has effect. For such a judgment, it is sufficient to prove infringement in one of these states. If a right based on prior use is successfully asserted in the area of the one state of infringement, the question arises as to whether the action in the other states will also fail for this reason.
(Michael Nieder, GRUR Patent 2025, page 25)
Decisions of the UPC before the Federal Constitutional Court and the ECtHR
This article examines the extent to which constitutional complaints and individual applications against decisions of the UPC, an intergovernmental organisation, can be lodged with the German Federal Constitutional Court (FCC) or the ECtHR, respectively. Under the current case law of the FCC a constitutional complaint would only be successful if the applicant can prove that the minimum standard required by the German constitution is generally not met within the intergovernmental organisation. The applicant of an individual application to the ECtHR would have to demonstrate that the intergovernmental organisation universally fails to guarantee a level of human rights protection that is equivalent to that provided by the ECHR. By contrast, individual actions by an intergovernmental organisation are in principle not subject to a constitutional complaint or an individual application. In the case of the UPC, however, Article 23 UPCA, according to which actions of the UPC are directly attributable to the CMS, opens up the possibility of subjecting individual acts of the UPC to a constitutional review by the FCC or a human rights review by the ECtHR, e. g., in case the Court of Appeal of the UPC fails to make a reference for preliminary ruling to the CJEU contrary to Article 267(3) TFEU.
(Simon Klopschinski, GRUR Patent 2025, page 14)
Auxiliary requests and patent restrictions in UPC proceedings – impressions from practice
The UPC’s order of 26 February 2026 in case UPC CoA 335/2023 – NanoString answered many questions but left one explicitly open: The question of the (in)admissibility of an auxiliary request in summary proceedings. In the meantime, further orders and procedural orders from summary and main proceedings have been issued, shedding some light on the proverbial darkness. This is taken here as an opportunity for an initial overview. However, the following description is not exhaustive and even less conclusive.
(Oliver Jan Jüngst und Moritz Schroeder, GRUR Patent 2025, page 10)
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