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.
November 2024
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)
Determination of FRAND licence conditions by the Unified Patent Court?
Matthias Leistner recently addressed the question in this journal of how the Unified Patent Court (UPC) should implement the decision of the Court of Justice of the European Union in the Huawei v ZTE case in patent infringement proceedings involving a FRAND defence (GRUR Patent 2024, 327). In this context, he takes the view that the UPC can and should – like the English courts – determine the terms of a FRAND licence agreement in the case of mutually "willing" parties who are neither able to agree on the terms of such an agreement nor willing to accept a binding provision and ist modalities by an arbitration tribunal. This article attempts to shed light on the conditions and limits of such a judicial FRAND determination. (Peter Meier-Beck, GRUR Patent 2024, page 411)
The Unified Patent Court: A Supranational Tribunal Embedded into a Complex System of Rules and Legal Cultures
This article analyses a recent order by the UPC (local division The Hague) in an action for provisional measures which raises a number of complex questions regarding the interpretation of the claimant’s requests, the concept of contracting member state to the UPCA, international jurisdiction under Article 31 UPCA, the territorial scope of decisions pursuant to Article 34 UPCA, cease-and-desist declarations, and the urgency of actions for provisional measures. To solve these issues the UPCA has to be interpreted in accordance with public international law and European law, taking into account the national practices of all contracting member states. (Simon Klopschinski, GRUR Patent 2024, page 395)
The Editors‘ Choice – UPC (CD Paris), decision v. 4.7.2024 – UPC_CFI_230/2023, GRUR-RS 2024, 16255
In an order from 2 May 2024 (UPC CFI 484/2023), the UPC central division in Paris declared Article 71c (2) of Regulation (EU) 1215/2012 to be inapplicable if the parallel national infringement action was filed before the UPCA came into force (1 June 2023). The author has already countered this view in GRUR Patent 2024, 291. In a comparable scenario (initiation of parallel infringement and invalidity proceedings before June 1, 2023), the Paris local division now follows the approach of the Paris central division and denies the requirements of Article 71c (2) of Regulation (EU) 1215/2012. The author explains why this is not correct. (Michael Nieder, GRUR Patent 2024, page 391)
The Boards of Appeal and the interpretation of the patent claim – plus decision T 439/22
The Boards of Appeal of the EPO have been in disagreement for some time about how the claim should be construed when examining patentability. Now a Board of Appeal has referred respective questions to the Enlarged Board of Appeal. This article presents the refferal decision. (Hermann Deichfuß, GRUR Patent 2024, page 385)
The novelty of an invention by reworking a prior publication in accordance with the “Organogelmaterial” decision
It is chemical or pharmaceutical inventions in particular that can be exposed to a special form of the novelty objection: Their subject matter is often already present “in cognito”, so to speak. I. e., the success and outcome of a specific chemical or pharmaceutical process – according to the invention – can occur, for instance, when a process is reworked that has been explained to aim for a completely different result or product. Yet, this issue of results being produced by happenstance requires further scrutiny. Despite the evident effect and outcome of a process, there may be an incongruence between the prior publication and the later invention that can be crucial when it comes to assessing the issue of novelty. The German Federal Court of Justice’s recent “Organogelmaterial” judgment provides an update on the court’s current doctrine. This article will provide an outline for the complex “rules of the game” under the court’s doctrine. (Jochem Gröning, GRUR Patent 2024, page 381)
Developments and findings of FRAND case law since the ECJ's Huawei/ZTE decision
The conditions under which licence offers correspond to the FRAND conditions have been a concern for patent litigation courts for some time and were marked by the now well-known Huawei/ZTE decision of the European Court of Justice. In this decision the CJEU created for the first time a concrete, binding framework for licence negotiations between SEP owners and technology users, where compliance or non-compliance is crucial for the injunction claim. After almost 10 years since the Huawei/ZTE decision, we are attempting to examine the general framework of the CJEU both with regard to its implementation by the German Supreme Court (so-called FRAND Objection I and II case law) as well as with regard to national and international development of (instance court) case law from a practitioner's perspective. (Cordula Schumacher/Clemens-August Heusch, GRUR Patent 2024, page 373)
In the new edition of the authors’ regular case law overview for GRUR Patent, they provide a succinct, yet detailed where necessary, insight in the UPC’s most recent verdicts. (Klaus Haft/Sabine Agé/Giulia-Isabella Otten, GRUR Patent 2024, page 358)
Anti-suit injunctions in the United States in the SEP and FRAND context: Recent developments and overview
This article discusses the concept of anti-suit injunctions (ASIs) and the use of ASIs in the context of standard essential patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing disputes. First, we introduce anti-suit injunctions and outline the three-step test for assessing the propriety of an ASI in the United States, which includes satisfying two threshold requirements, applying the “Unterweser” factors, and assessing the injunction’s effect on international comity. Second, we discuss specific cases in which US courts addressed requests for anti-suit injunctions in the FRAND context and consider the factors these courts relied on to grant or deny anti-suit injunctions. Third, we summarise the recent February 2024 Ericsson v. Lenovo decision in the Eastern District of North Carolina. We consider the court’s reasoning for declining to issue an anti-suit injunction against Ericsson and how this decision fits in with previous US anti-suit injunction cases. Finally, we consider how the US approach to ASIs differs from approaches in China and Europe. (Anne-Raphaëlle Aubry/Tigran Guledjian/Eric Huang, GRUR Patent 2024, page 344)
Applicable law and gaps in unitary patent law - Part 3: External, internal and apparent gaps
This article is the last piece of a three-part analysis of the choice-of-law and gap-filling architecture under the system of the European unitary patent law. Considering the multi-level structure of the conglomerate consisting of international, European, and national legal norms, the challenge is not limited to choice-of-law but extends to gap-filling wherever the system of the European unitary patent law is devoid of substantive legal norms. Building on the previous analyses in the first and second part of this series (GRUR Patent 2024, 230, and GRUR Patent 2024, 282), this article will analyse and explain the methods of gap-filling and explain practical implications and rules for those parts of the European unitary patent system where a normative vacuum must be filled by recourse to national legal doctrine. (Tim W. Dornis, GRUR Patent 2024, page 338)
SEPs in the UPC system: How the UPC should implement Huawei/ZTE
This two-part article discusses how SEP disputes should be handled before the Unitary Patent Court. The first part (GRUR-Patent 2024, 272) has addressed the double nature of the Huawei/ZTE framework for the enforcement of SEPs: It explains how the obligations for the enforcement of SEPs, laid down in Huawei/ZTE, equally follow from EU competition law as well as from the FRAND undertakings in conjunction with the Union law principle of good faith. This second part will discuss how the UPC should treat cases where two generally willing licensees cannot reach agreement on FRAND terms and conditions. It will show how the UPC, based on the Huawei/ZTE case law and by way of an active case management, could stimulate arbitration settlements and, as an ultima ratio, engage in the setting of FRAND terms and conditions, thereby following the example of the English courts. (Matthias Leistner, GRUR Patent 2024, page 328)
R&D collaboration between companies and universities: an important part of Germany's innovative capacity
Germany is living off its reputation but no longer flourishing as a location for innovation – which at the same time puts a great deal of pressure on researchers at German companies, research institutions and universities. Despite a (once) promising R&D rate, the proportion of actual market relevant innovations and services from Germany is declining. The following article sheds light on Germany as a research location with its various players with specific focus on cooperation of companies and universities as well as research institutes. It concludes with a call for the legislator to strengthen Germany as a location for innovation in this specific field in the long term (Martina Eberle/Christian Czychowski, GRUR Patent 2024, page 316)
Defense in UPC revocation actions – Admissibility of subsequent requests for patent amendment
The effective defence of a patent against several invalidity attacks before the UPC is of utmost importance to patentees. Two recent decisions of the central division address the situation of a revocation action before the central division and parallel counterclaims for revocation before a local division. The decisions deal with the conditions under which the defendant can file subsequent amendments to patent claims. They also provide insights on procedural issues relating to the filing of such requests and the applicable rules and standards for assessing their admissibility, as well as the conditions for referring procedural questions to the Court of Appeal. (Dirk Schüßler-Langenheine/Thorsten Bausch/Katrin Winkelmann, GRUR Patent 2024, page 310)
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