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.
March 2025
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)
UPC Digest, Issue no. 3: Applications for orders to produce evidence and information
In this, the third issue of our UPC Digest, we address a topic that was a particular focus of attention during the drafting phase of the UCPA: What position would the new law take regarding obligations to produce evidence and information? Two very different approaches could have served as role models, namely civil law in its continental European form and common law in its Anglo-Saxon form. Whereas the legislative process could be based in large measure on EU law (which takes precedence anyhow), decisions on the first cases have meanwhile been handed down that we believe may provide a clear pointer to where the journey before the UPC may be heading. The Court takes the relevant norms (namely Articles 59 and 67 UPCA, and R. 190 f RoP) very seriously, but interprets them ‘conservatively’ to begin with (in continental Euro-pean sense). The spectre of a ‘UPC discovery process’ seems to be banished for the time being, and parties may be glad to have a new device and lever that can also be put to excellent strategic use.
(Volker Henke, GRUR Patent 2025, page 3)
The relationship between proceedings before national courts and the Unified Patent Court (UPC) as well as between the local and central divisions of the UPC remains uncertain after the first decisions. Potential infringers may ask themselves how to most effectively attack the validity of the asserted patent. In addition to the possibility of a counterclaim for revocation, there is still the option of challenging the respective national portion of the European patent before a court of a member state or of filing a stand-alone revocation action before the central divisions of the UPC. This article examines the various courses of action in light of existing case law.
(Lars Hessmann and Jonathan Hechler, GRUR Patent 2025, page 28)
The first stage of the convergence approach before the BoA of the EPO – analysis and practical approaches
The convergent approach shall increasingly limit the possibilities for parties to amend their case in appeal proceedings before the Boards of Appeal of the EPO. This seems to cause difficulties for patent applicants or proprietors. Auxiliary requests, in particular so-called “carry over requests”, seem to have increasingly fallen victim to the first level of the convergent approach in the recent past. However, auxiliary requests may be of enormous strategic importance and decisive for the grant or limited maintenance of a patent. This article is intended to shed light on the 1st stage of the convergent approach, provide practical advice on how to avoid problems therewith and address proceedings before the German Federal Patent Court and the UPC.
(Matthias Grob, GRUR Patent 2024, page 552)
European legal requirements for proportionality as a limit to injunctive relief under patent law
According to Section 139 (1) sentence 3 of the German Patent Act in the version of the Second Act to Simplify and Modernise Patent Law (2nd PatModG), the injunction under Section 139 (1) 1 PatG “is excluded if, due to the particular circumstances of the individual case and the requirements of good faith, the injunction would lead to a disproportionate hardship for the infringer or third parties that is not justified by the exclusive right”. Although the new provision has been discussed at length, Section 139(1) sentence 3 PatG has not yet gained any practical significance in case law. The following article shows that, at the latest since Section 139 (1) sentence 3 PatG came into force, the proportionality defence must be interpreted and applied in conformity with EU law. This has consequences for the application of Section 139 (1) sentence 3 PatG in general and ist relationship to the FRAND-defence, as well as other particular aspects of the proportionality de-fence. These questions are to be clarified by referral to the Court of Justice under Article 267 TFEU.
(Christian Heinze, GRUR Patent 2024, page 495)
The designation of honorary inventors, i. e., natural persons who do not meet the legal requirements for inventorship, with the true inventors’ explicit or at least implicit consent, is rarely brought to the attention of the public. However, consequences can be severe. They include additional renumeration claims brought forward by the true inventors, the loss of the exclusive right to exclude competitors conferred by the patent and the invalidation of the intellectual property right. Countermeasures are proposed that may be implemented by applicants to discourage incorrect designations.
(Carsten Richter, GRUR Patent 2024, page 546)
After almost one and a half years, more than 550 orders and decisions have already been issued by the court of first instance and the Court of Appeal, which demonstrates the UPC's high workload and efficiency. Most of them still provide key guidance on procedural questions, some on material patent law. More and more decisions on the merits have been issued in compliance with the strict time limit regime of 12 months after the respective complaints were filed. Thus, it appears worthwhile to provide an overview to facilitate access to the early guidance to the UPC Agreement (“UPCA”) and Rules of Procedure (“RoP”) given by the court.
(Klaus Haft, Sabine Agé, Giulia-Isabella Otten, Natali Goginashvili and Alix Fourmaux, GRUR Patent 2024, page 537)
The party representative's duty of truth before the Unified Patent Court
The following article addresses – from a German perspective – the duty of representatives not to misrepresent cases or facts before the Unified Patent Court. This obligation encompasses new challenges for legal practice which is particularly because the national duty to adhere to professional legal ethics is now elevated to the supranational context of the European Agreement on a Unified Patent Court, including its corresponding procedural rules and the code of conduct for representatives. (Mathias Bähr, GRUR Patent 2024, page 495)
The enforcement of injunctions within the legal framework of the UPCA
The first injunctions of the UPC in proceedings on the merits are about to be or have just been issued, so that there is hardly any case law on enforcement matters. However, the enforcement of decisions based on the UPCA and the RoP will be of great practical importance in the near future. Against this background, this article explains the basic rules of the enforcement of injunctions, but also deals with some practical relevant issues, such as the options for tailoring enforcement, particularly the limitation of enforcement to certain Member States. (Mario Urbiks/Laurin Haasis, GRUR Patent 2024, page 489)
The concept of an active ingredient within the meaning of Article 1(b) of the SPC Regulation
Supplementary protection certificates (SPCs), which grant holders of pharmaceutical patents an exclusive right extending beyond the term of the patent, can only be granted for a "product" (Art. 2 SPC Regulation). According to the legal definition of Art. 1 (b) SPC Regulation, "product” refers to the 'active ingredient or combination of active ingredients of a medicinal product'. When defining the term “active ingredient", case law focuses on the medicinal effect of the ingredient in the context of pharmaceutical law and thus distinguishes it from excipients. In this context, the Czech Supreme Administrative Court referred the question to the ECJ, of whether, in deciding on the authorization of a medicinal product, the classification of an ingredient under pharmaceutical law already excludes the possibility that it is an active ingredient – a highly relevant question in view of the increasing economic and scientific importance of ingredient combinations. It seems questionable whether such a formal approach and the adoption of the terminology from pharmaceutical law are in keeping with the spirit of the SPC Regulation. (Marco Stief, GRUR Patent 2024, page 483)
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