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.
January 2025
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)
Have Made – Is a realignment of the manufacturing process needed?
The scope of the right to manufacture under patent law becomes relevant in case of contract manufacturing by third parties on behalf of the patent owner and, in particular, its licensee for the implementation of a division of production. Based on the manifestations of the so-called extended workbench, the prerequisites and scope of the authorization to manufacture or have made are examined – including alternative forms of consent under patent law, such as a covenant not to sue, as well as against the background of the recent discussion on the access to standard essential patents (SEP) within multi-tier upstream supply chains. The article raises the question of whether it is preferable, or even required, to convey the right to manufacture via a classic (sub)license model. (Sebastian Wündisch, GRUR Patent 2024, page 476)
Bundle patents before the UPC: Which substantive law to apply? A conflict-of-laws analysis of the EPC and the UPCA
A closer look at current case law in patent infringement litigation displays that claims for infringement of a European bundle patent brought before national courts are pleaded and decided based on the respective national law, whereas the same type of claim before the Unified Patent Court (UPC) is pleaded – and most likely soon to be decided – based on the Unified Patent Court Agreement (UPCA). The underlying interpretation of art. 3c UPCA that the UPCA governs procedural and substantive law for all patent lawsuits pending before the UPC is at least surprising, but most likely wrong. Whether the use of technology is a patent infringement or not – and which legal consequences this may have – should not depend on whether the rightholder enforces his claim before a national court or the UPC. Nor should the potential infringer be able to change the applicable rules by a preemptive strike. (Mary-Rose McGuire, GRUR Patent 2024, page 466)
The analysis is centered on key issues of the UPC Düsseldorf local division‘s decision, in particular the prerequisites of contributory patent infringement, how to deal with applications for retroactive extension of time limits and the right of prior use in cross-border cases, and finally the legal consequences, in particular in the form of claims for information and disclosure of the books and for removal of the infringing products from the distribution channels. (Fabian Schubach, GRUR Patent 2024, page 447)
“Technical problem”/“task” – one vocabulary, two meanings, using the example of the Federal Court of Justice's “Mirabegron” decision
The issue of an invention’s “task“ or of the “technical problem“ that lies at the heart of an invention has always been a conceptual foundation of patent law doctrine. Notwithstanding the ubiquity of the issue, lower courts have regularly stumbled when confronted with the relevant questions, both in invalidation and infringement cases. Over the years, therefore, the German Federal Court of Justice (BGH) repeatedly had to clarify the contours of the issue. It is the evident theoretical and practical vexation that makes a closer look at the BGH’s case law and the court’s doctrine an interesting endeavor – in particular in light of the most recent judgment in the Mirabegron case. (Jochem Gröning, GRUR Patent 2024, page 442)
The current EPO case law on the patentability of AI inventions
This article provides an overview of the most recent and representative case law of the EPO Boards of Appeal concerning the issue of patentability of AI inventions as a sub-group of CII applications. This overview ranges from medical AI systems to AI applications for linguistics and marketing analyses, image processing, and clinical billing applications. In addition, crucial questions concerning further developments in the EPO case law on AI-based inventions will be raised, including practical issues and advice. (Kemal Bengi-Akyürek, GRUR Patent 2024, page 435)
The “three-action constellation” – on the objection of other lis pendens situations
In the scholarly literature, the combination of an independent invalidity action in the central division with an infringement and invalidity counterclaim in the local or regional division between the same parties for the same patent (cf. Rule 75(3) RoP) is considered to be fully admissible as a so-called three-action constellation. The starting point for this position is found in Art. 33(2), first sentence UPCA, which excludes invalidity claims and invalidity counterclaims, also known as the “bar on lis pendens”. This author, however, considers Article 33(2), first sentence UPCA not to be a rule on lis pendens constellations, but rather to be a jurisdictional provision within the meaning of Rule 19(1b) and (7) RoP. Accordingly, he doubts the admissibility of the three-action combination insofar as the grounds for the invalidity claim and the invalidity counterclaim are identical. (Michael Nieder, GRUR Patent 2024, page 432)
Current questions of service in proceedings before the UPC
In its inaugural year, the legislation governing the service of documents before the Unified Patent Court has been the subject of substantial discourse, but also offering initial insights into the nuances of this new legal framework. The article provides an overview of the service of process rules of the Unified Patent Court's Rules of Procedure (RoP), which are based on a combination of original regulations and references to the EU Service Regulation. By using examples from orders issued by the UPC during its first year of existence, several specific issues are analysed, such as the timing of electronic service, service without attachments, questions related to alternative forms of service, and service by the parties themselves in the case of provisional measures. (Herwig Lux/Anna Marie Kottmann, GRUR Patent 2024, page 425)
In this second issue of our UPC Digest, we continue to focus on formal aspects at a time when the first main proceedings are being completed before the Unified Patent Court and the various divisions of the court are increasingly able to address matters of substantive law. This time we take a look at service issues, an important area that harbours a number of pitfalls, not only for attorney practitioners. An effective and legally secure service regime is essential if the new patent system is to develop the authority and acceptance hoped for it, if only because of the delays that can arise in the early stage of the proceedings. This article provides a commentary overview of the problems addressed in UPC practice so far and of the approaches towards solving them, the aim being to give practitioners some initial guidelines. (Volkmar Henke/Martin Drews, GRUR Patent 2024, page 420)
We use cookies on our website. Some of them are essential, while others help us to improve this website and your experience.If you are under 16 and wish to give consent to optional services, you must ask your legal guardians for permission.We use cookies and other technologies on our website. Some of them are essential, while others help us to improve this website and your experience.Personal data may be processed (e.g. IP addresses), for example for personalized ads and content or ad and content measurement.You can find more information about the use of your data in our privacy policy.You can revoke or adjust your selection at any time under Settings.
If you are under 16 and wish to give consent to optional services, you must ask your legal guardians for permission.We use cookies and other technologies on our website. Some of them are essential, while others help us to improve this website and your experience.Personal data may be processed (e.g. IP addresses), for example for personalized ads and content or ad and content measurement.You can find more information about the use of your data in our privacy policy.Here you will find an overview of all cookies used. You can give your consent to whole categories or display further information and select certain cookies.
