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.
July 2024
The Editors' Choice - UPC (Court of Appeal) order of 26.2.2024 335/2023
The rules of the EPGVerfO (see R. 211.2) provide that the court may require the applicant of an application for interim measures to provide all reasonably available evidence in order to be able to convince the court with a “sufficient degree of certainty” that the applicant is entitled to initiate proceedings, the patent is valid and its rights are being violated or are at risk of being violated (see Art. 47 UPCA). But how can the “sufficient degree of certainty” be determined in more detail? This “The Editors’ Choice” addresses this question in light of the UPC Court of Appeal’s order in NanoString Technologies et al./10x Genomics et al. (detection procedure). (Winfried Tilmann, GRUR Patent 2024, page 297)
The Editors’ Choice – UPC (LD Munich), Order of 02.02.2024 – UPC_CFI_14/2024
This “The Editors’ Choice” deals with and sheds light on the UPC Munich local division’s application of the rules on optional bifurcation of the infringement proceedings and the counterclaim for revocation according to Art. 33(3) UPCA. In the given case a central revocation action concerning the same patent was pending at the UPC central division as well as opposition proceedings before the EPO. (Stephan Dorn, GRUR Patent 2024, page 295)
Concurrent lis pendens - order of Paris central division 2 May 2024 – UPC CFI 484/2023
The UPC central division in Paris considers Art. 71c para. 2 Regulation (EU) 1215/2012 to be inapplicable if the parallel pending national proceedings were initiated before the UPCA came into force (1 June 2023). The article shows the consequences of this view, argues in favour of the applicability of the conflict rules in Art. 71c para. 2, 29 et seq. Regulation (EU) 1215/2012 also in such a case and explains the procedural implications of this. (Michael Nieder, GRUR Patent 2024, page 291)
Applicable law and gaps in unitary patent law - Part 2: Referral structures in the multi-level system
This article is the second part 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, choice-of-law proves to be a particularly vexing challenge. Building on the previous analysis of the status of an incomplete unification of the patent rights and titles and of the conditions of rights enforcement under the European unitary patent law in the first part of this series (GRUR Patent 2024, 230), this article will take a closer look at choice-of-law under the reign of Regulation (EU) No 1257/2012, Regulation (EU) No 1260/2012, the UPCA, and the Rome II Regulation. In the third and final part of this series (in the next issue), we will address questions of substantive law and choice-of-law gap-filling under the European unitary patent system. (Tim W. Dornis, GRUR Patent 2024, page 282)
SEPs in the UPC System: The Issue of Market Dominance after Huawei/ZTE
This two-part article discusses how SEP disputes should be handled before the Unified Patent Court. The first part addresses 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. The second part (to be published in GRUR-Patent 8/2024) will discuss how the UPC should treat cases, where two generally willing licensees cannot reach agreement on FRAND terms and conditions. It will show ways how the UPC, based on the Huawei/ZTE case law, 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. (Martin Drews/Volkmar Henke, GRUR Patent 2024, page 272)
UPC Digest, Issue 1: The UPC’s time period regime and its established legal practice so far
In each issue of our quarterly UPC Digest, we throw a spotlight on a specific topic in the UPC’s case law. To start the series, we firstly discuss the subject of time periods, which at first glance may not be the Mont Ventoux of patent infringement and validity proceedings before the UPC, but it still presents a number of obstacles on the way there. Even the start of a time period is not always clear-cut, and one question that arises in a variety of situations is whether there is justification for extending or shortening a period. As yet, of course, there is no established, let alone harmonised, handling of these aspects by the various divisions of the court. This article aims to provide a commentary overview of the problems addressed in UPC practice so far and of the approaches towards solving them, to shed light on some remaining unresolved issues and thus to provide practitioners with an initial guide. (Martin Drews/Volkmar Henke, GRUR Patent 2024, page 266)
The Editors’ Choice – UPC (Local Division Düsseldorf) GRUR-RS 2024, 7098, and UPC (Local Division Mannheim), UPC_CFI_359/2023 (21.3.2024)
In our category “The Editors’ Choice” we present current verdicts or orders that have special importance and are of interest for the patent community. We provide for a concise analysis by experts in the field and an abridged version of the court’s grounds with the most relevant parts. The two decisions of the Local Divisions Düsseldorf and Mannheim concern several aspects of confidentiality orders according to Rule 262A RoP. Interestingly, the Local Divisions have aligned their orders with the aim to harmonise the legal issues concerned. The orders shed light on the general legal standard for measures under 262A RoP and provide further indication for the scope of such orders. (Sebastian Dworschak/Lina Marie Schauer, GRUR Patent 2024, page 253)
The Editors‘ Choice – UPC (Court of Appeal) GRUR-RS 2024, 6739
In our category “The Editors’ Choice” we present current verdicts or orders that have special importance and are of interest for the patent community. We provide for a concise analysis by experts in the field and an abridged version of the court’s grounds with the most relevant parts. This UPC CoA decision deals with two issues regarding the UPC proceedings. The first issue concerns a primarily procedural question, namely the composition of the panel at the CoA. The decision discussed here was rendered by the panel of legal judges without involving technical judges. In the view of the Court the issues at stake were of a purely legal nature and therefore did not require the expertise of a technical judge. Secondly, the decision provides guidelines with regard to the access of the public to the register of the Court and to the written pleadings and evidence submitted during the proceedings to the court file. (Jochen Bühling, GRUR Patent 2024, page 246)
Injunctions against the sale of products that support standards can create economic pressure for manufacturers to accept excessive royalties or other non-FRAND licence terms rather than face market exclusion of their standard-supporting products. We consider three case studies and compare the cost of the issued injunction to the terms sought by the SEP holder. In each case, the estimated injunction cost greatly exceeded the offered terms. We also report data showing there were at least 171 litigation matters worldwide involving SEPs in which an injunction was requested between the years 2010 and 2023. In Germany alone there were 122 SEP litigations where injunctions were requested, of which 90 were (at least partially) granted by the court. (John Hayes/Assaf Zimring, GRUR Patent 2024, page 240)
G1/22 and G2/22 and "sorafenib tosylate" - the "rebuttable presumption" of entitlement to claim priority
Whether a party is entitled to claim priority under Article 87(1) EPC is exclusively governed by the autonomous law of the EPC and depends on the formal legitimacy provided by Art. 88 EPC. This applies to both the presumption stipulated in G1/22 and its rebuttal, with the latter limited to rare exceptional cases such as bad faith behaviour by the subsequent applicant or the outcome of litigation before national courts regarding the title to the subsequent application (Art. 60 EPC). However, the rebuttal is not conditioned on demonstrating an effective substantive legal transfer of the priority right. (Rainer Engels/Markus Ackermann, GRUR Patent 2024, page 236)
Applicable law and gaps in unitary patent law – Part 1: The "non-uniform unitary patent law"
This article is the first of three papers that are dedicated to issues of choice-of-law and gap-filling in the system of the European unitary patent law. In light of the multi-level architecture consisting of different legal regimes of international, European, and national patent law, choice of the applicable law and of the substantive legal norms is particularly challenging. Building on one another, each of the three articles will focus on a specific issue within the field: What level of “unification” of individual legal titles and rights (i.e. European patents with unitary effect and European patents) and of the enforcement of these rights has been achieved under the European unitary patent law? (Part 1) How do the choice-of-law norms in European unitary patent law, the EU-Acquis in private international law, and the different levels of substantive patent law interact, in particular with regard to Regulation (EU) No 1257/2012, Regulation (EU) No 1260/2012, the UPCA and the Rome II Regulation, as well as in the national patent regimes? (Part 2 in issue 7/2024) And, finally: Is there a method and what are the rules to determine the applicable substantive-law norms to fill the inevitable voids in the European Regulations and in the UPCA? In other words: How to fill gaps in the European unitary patent system? (Part 3 in issue 8/2024). (Tim W. Dornis, GRUR Patent 2024, page 230)
The first year of the Unified Patent Court – a case law overview
On June 1, 2023, the Unified Patent Court ('UPC') finally opened its doors. Since then, more than 200 orders and decisions of the Court of First Instance and the Court of Appeal have already been issued, a large part of which have been published on the UPC website. Most of them provide for guidance on procedural questions, some on material patent law. Thus, it appears worthwhile to provide for 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/Giulia-Isabella Otten, GRUR Patent 2024, page 197)
The Editors' Choice - Higher Regional Court Karlsruhe GRUR-RS 2024, 4839 - solenoid control valve
Art. 83 UPCA stipulates two exceptions to the UPC’s exclusive jurisdiction for actions based on Unitary and European patents: Paragraph 1 provides that, during a transitional period of seven years, actions can be continued to be filed with the national courts or other competent national authorities. According to paragraph 3, the jurisdiction of the UPC can be excluded through a so-called opt-out. For proceedings before national courts, it has so far been very controversial as to whether and to what extent they should apply the UPCA or whether they should resort to their national patent laws. The Higher Regional Court Karlsruhe has now decided on this question – as far as can be seen for the first time in Germany. The court has rejected the application of the UPCA. This article analyses the arguments brought forward for and against application of the UPCA as well as the reasons for the decision that will most likely point the way for the further development of German case law. (Tim W. Dornis, GRUR Patent 2024, page 202)
The assertion of a further patent as an extension of the claim before the UPC
The legal provisions of the UPC do not contain any rule that explicitly provides for the extension of a claim by a further patent during ongoing proceedings. Even if this seems self-evident from a German perspective, this question of admissibility needs to be considered independently of national influences. This article analyses the legal framework, the relevant criteria and possible objections to such an extension against the background of the UPC's first decisions on this issue. As a result, the extension of a claim by a further patent is also permissible in general before the UPC. It is the task of the courts to weigh and balance the interest of the patent proprietor in being able to introduce a further patent into the proceedings at any time and the interest of the defendant in not being restricted in his defense options when examining the admissibility. (Tobias J. Hessel/Marie Gessat, GRUR Patent 2024, page 197)
FRAND without SEP - does the IPCEI commitment follow the FRAND declaration?
The prerequisite for public funding of R&D projects by EU member states is their exemption from the ban on state aid in accordance with Art. 107, 108 TFEU. In the case of particularly high funding intensities, the funded companies must undertake to grant third parties non-exclusive licenses to the research results at market prices on a non-discriminatory basis (so-called IPCEI obligation). The IPCEI obligation is not limited to patents, but to all research results protected by intellectual property rights. It may have the effect of protecting third parties, so that an infringer can invoke an objection based on it – comparable to the FRAND defence – in patent infringement proceedings. (Sebastian Wündisch, GRUR Patent 2024, page 190)
Assessment of the validity of a patent by the Unified Patent Court
A little more than six months after the Unified Patent Court commenced its work, the judgment of the Court of Appeal in 10x Genomics v. NanoString is the first final decision of the new court to deal in detail with the interpretation of an asserted patent claim and, based on this, with the assessment of the patentability of the subject matter of a European patent. On the basis of this patent, a preliminary injunction was requested and issued by the Munich Local Division of the Court of First Instance. This fact alone shows that the significance of the decision can hardly be overestimated. A closer analysis of the decision confirms that it provides a wealth of insights into the way in which the UPC will deal with the questions of novelty and inventive step, which are at the centre of the examination of the validity of a patent in proceedings for interim measures, but also in proceedings on the merits. This article attempts to summarise the most important findings on substantive patent law and its application that can be derived from the decision of the UPC Court of Appeal. (Peter Meier-Beck, GRUR Patent 2024, page 178)
The Editors' Choice – UPC (Munich local division) GRUR-RS 2023, 40583 – Nachweisverfahren II
The decision examined by the author in this “The Editors’ Choice” concerns enforcement issues with the order of the UPC’s local division in Munich in the case "Nachweisverfahren" ('detection method') (GRUR 2023, 1513). It analyses issues of enforcement of an interim order by means of an order of penalty payments and has a deeper look at the provisions of Article 62 UPCA and Article 83 III and IV UPCA as well as Rule 354 RoP. (Stephan Gruber, GRUR Patent 2024, page 162)
The Editors’ Choice – UPC (Munich local division) GRUR-RS 2023, 40572 – UPC_CFI_249/2023
The decision analysed in the author‘s “The Editors' Choice” addresses a question that is rather unusual in practice: How to deal with pending proceedings for the issuance of interim measures and the payment of costs if the respondent submits a cease and desist declaration in the first instance and before the date of the oral hearing in the proceedings. What is of particular interest is the decision‘s interpretation of Rule 360 RoP and Art. 69 UPCA – both illustrating existing gaps in the UPCA and the RoP. (Nina Bayerl, GRUR Patent 2024, page 159)
Revocation of a patent by the patent proprietor during a revocation action before the UPC
The Unified Patent Court (UPC) is still in its infancy. It is eagerly awaited how the court will fill those areas with life where there is no conclusive legal codification, for example with regard to the question of how to deal procedurally with a patent revocation by the proprietor during a pending revocation action and the subsequent consequences for the termination of proceedings and the bearing of costs. In particular, disposal of the action in accordance with Rule 360 RoP may be considered. The following article provides a brief overview of the options for waiving a patent, before addressing the procedural steps during a revocation action, termination of the proceedings and the bearing of costs. (Anna-Katharina Hübler/Yori Manzke, GRUR Patent 2024, page 153)
Shifting the litigation cost risk through patent transfer
An injunction is the patentee's best defence against infringement. It is based on the idea that a patent is akin to property – an exclusive right at the full disposal of the owner, who can exclude any third party from using it. Courts make no distinction between the original inventor, their employer or an exploiter of the patent. Under certain circumstances, however, it may be questionable whether a plaintiff has standing if the patent-in-suit has only been transferred to them in order to frustrate the defendant's claim for reimbursement of the costs of litigation under Section 91 of the German Code of Civil Procedure (ZPO) in the event of unsuccessful litigation. (Lars Hessmann/Jonathan Hechler, GRUR Patent 2024, page 148)
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