JUVE Patent

The Editors' Choice - EPO (Chamber 3.3.02), decision from 4.10.2023 - T 0364/20 (NESTE/SOLVENT/ISOPARAFFIN FRACTION)

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 months's choice features a detailed analysis of the EPO’s decision T 0364/20 (NESTE/SOLVENT/ISOPARAFFIN FRACTION) by two judges of the EPO. (Kemal Bengi-Akyürek/Frédéric Bostedt, GRUR Patent 2024, page 61)

Image: ©EPO

Formal priority before the EPO according to G1/22 and G2/22

Haar locuta causa finita? Not quite. The Enlarged Board of Appeal may provide a pragmatic approach, allowing the problems that can arise regarding the formal right to priority to be dealt with practically effortlessly. However, contradictions loom – mostly at the expense of individual justice. The Board of Appeal’s final decision will show whether the pragmatic approach can bring about the desired relief for the EPO. (Johannes Druschel/Jérôme Kommer, Quinn Emanuel Urquhart & Sullivan, GRUR Patent 2024, page 55)

Image: ©EPO

The legality of the first orders of the UPC Court of Appeal

The first orders of the UPC Court of Appeal were all issued with only three judges, i.e., without technical judges, although Art 9 (1) UPCA provides otherwise. Although this is practicable and expedient, it is unfortunately contrary to the Agreement. According to the view expressed here, such a practice constitutes in principle grounds for rehearing under Art. 81 UPCA because of a fundamental procedural defect. At the same time, this may give rise to the possibility of challenging the court’s decisions before the European Court of Human Rights and, under certain circumstances, the German Federal Constitutional Court. (Aloys Hüttermann/Ferdinand Weber, GRUR Patent 2024, page 50)

Image: ©UPC

How Certain Joint Inventorship Rules Break Down When Humans and an AI System Work Together

Questions surrounding so-called AI-generated inventions or inventions made using AI systems are at least as controversial in the USA as they are in Germany and Europe. However, the discussion has now moved beyond the purely scientific level. The following article presents the discussion in US patent law with a particular focus on the most recent judicial decisions in the so-called Thaler case (concerning the "DABUS" inventions also discussed in Germany and Europe, see most recently Dornis GRUR Patent, 2023, 14). The article also presents another interesting facet: a hitherto little-discussed aspect of the problem is revealed in cases in which AI-generated inventions or inventions made using AI systems have already been published before the patent application was filed. According to the concept of exclusion of patentability in the absence of novelty, which also applies under US law, if the invention already belongs to the state of the art, there is a risk of unpatentability under certain circumstances, even in the case of significant genuinely human inventive contributions. (Jeremy Baldoni, Tigran Guledjian, Sara Miller, Quinn Emanuel Urquhart & Sullivan, GRUR Patent 2024, page 27)

International prior use

The prior user right is so complex in both factual and legal terms that parties and their attorneys often fail to adequately claim prior use right before the courts. As if that were not difficult enough, prior use oftentimes does not take place in one place only. In a globalised world with complex supply chains, it may also extend over entire continents: A (raw) materials manufacturer (Tier 3/Tier 2) in country A supplies a parts producer (Tier 1) in country B, who in turn supplies an original equipment manufacturer (OEM) in country C, who ultimately offers its products via separate distributors in country D and globally. Where, how, when, and for whom a prior user right exists is then regularly a matter of dispute. This article closely examines the situation of a party alleging a prior use right in order to evaluate the legal issues. Currently, an international prior user right does not seem to be acknowledged, although some voices have made an argument in its favour. With the implementation of the Unified Patent Court and its Art. 28 EPCA, at least for European patents with unitary effect, the question has come up again: Can there be international prior use? (Jonas Smeets, Bird & Bird, GRUR Patent 2024, page 18)

Legal status in UPC injunction proceedings after the first inter partes order by the Munich local division

In the decision 10x Genomics v. NanoString, the UPC ruled for the first time in inter partes proceedings after conducting an oral hearing on the ordering of provisional measures. The decision issued by the Munich Local Division allows conclusions to be drawn as to the standards to be applied under the UPCA in order for provisional measures to be issued. In this context, the Rules of Procedure of the UPC stipulate that the court must be satisfied that the patent is valid with a sufficient degree of certainty. This article aims to shed light on how the assessment of legal validity in interim proceedings is embedded in the UPCA system and how the Munich Local Division of the UPC interprets the legal concept of “sufficient degree of certainty” in the 10x Genomics v. NanoString decision. (Christoph Schröder, Hannes Jacobsen, Paul Szynka, GRUR Patent 2024, page 11)

The reform of the compulsory patent licence by the European Union

During the COVID-19 pandemic, compulsory licensing of patents was subject to public discussions. At the same time, there was increasing awareness of the fact that there is hardly any harmonisation of the law on compulsory licensing within the EU. The European Commission intends to close this gap with COM(2023) 224 final. This article demonstrates the need for the EU to take action, but also shows that the current proposal takes the wrong conceptual approach. The article proposes an alternative. (Martin Stierle, GRUR Patent 2024, page 2)

The Editors’ Choice – UPC, Local Division Helsinki, UPC_CFl_214/2023 (20 Oct, 2023)

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 month‘s choice is a decision of the UPC Court of First Instance (Helsinki Local Division). The court‘s decision is important with regard to three aspects. Firstly, it takes sides on the issue of opt-out effects, in particular the question whether an opt-out fully terminates the UPC’s jurisdiction or whether it only ends the court’s exclusive jurisdiction. Secondly, it clarifies the interpretation of Art. 83(4) UPCA – the so-called opt-in provision. And, finally, it provides some guidance for the construction of the provisions on security for legal costs in Art. 69(4) UPCA and Rule 158 Rules of Procedure. (Gunnar Baumgärtel, Hermann Deichfuß, Tim W. Dornis, GRUR Patent 2023, page 302)

Part 2: Springboard profits - damages for non-infringing ancillary transactions in French and common law

A commercially significant value of patents can arise from the fact that, like a springboard, they allow revenues to be generated from services, supplies and accessories that are not patented. In addition, patents can help their proprietors to expand or maintain market share and to establish a certain price level – even beyond the patent’s term of protection. In the event of infringement, the question regularly arises as to how such revenues or economic advantages can be taken into account when calculating damages. These questions are discussed in other jurisdictions under the illustrative terms of ‘springboard profits’ or ‘effet tremplin’. This article presents English and French case law on these issues, supplemented by Canadian and Australian judgments. They can serve as illustrative material for the interpretation of § 139 Patent Act. Moreover, such a comparative approach is also of relevance for the interpretation of Art. 68 UPCA. (Benjamin Raue, University of Trier, GRUR Patent 2023, page 294)

Obvious prior use where reverse engineering is required

According to long-standing case law, invoking prior public use pursuant to § 3 section 1 of the Patent Act requires, among other things, that the possibility of the public becoming aware of the invention is not too remote. With regard to electronic components such as semiconductor chips, it remained open for a long time whether such a possibility can still exist if the relevant features are only recognisable through reverse engineering. Considering an example from the current case law of the German Federal Court of Justice as presented here, there seems now a clear judicial acceptance of public prior use where reverse engineering is required. (Martin Rütten, Cohausz & Florack, GRUR Patent 2023, page 291)

Judicial reference of the German Patent Court: Limits of judicial cooperation

The amendment of Sections 82 and 83 of the German Patent Act has fundamentally changed the time limits in patent nullity proceedings. The new provisions, which provide for a prompt referral to the court, are intended to improve procedural efficiency and to reduce existing legal uncertainties regarding the validity of patents. Despite the positive effects on the acceleration of proceedings, the strict time limit regime until the judicial reference is made poses a challenge for both courts and parties. This article examines the first experiences of patent law practice with the newly designed procedural rules and analyses their effects on infringement proceedings. (Dominik Ho, Jakob Dandl, df-mp, GRUR Patent 2023, page 286)

Disclosing the performance of an invention at the EPO - does one way suffice?

This article summarises recent decisions of the Boards of Appeal on the issue of sufficiency of disclosure of the invention. The authors examine inter alia the question of whether, and in particular to what extent, it is sufficient that the patent (application) discloses one way for the skilled person to carry out the invention, and how the requirement of “one way” is to be reconciled with the requirement that the invention must be disclosed over the whole scope claimed. Differences among the approaches to the question of sufficiency of disclosure, also with regard to the case law from Germany and the United Kingdom, could be due to a different understanding of the notion of “invention”. (Frédéderic Bostedt/Karel Peirs/Kemal Bengi-Akyürek, European Patent Office, GRUR Patent 2023, page 280)

Current developments in employee invention law

In recent years, lower courts and the arbitration board for employee inventions had numerous opportunities to deal with specific aspects of the law on employee inventions. The Federal Court of Justice (BGH), by contrast, had its last case concerning employee inventions – as far as published – in July 2021 in the “Zündlanze” judgment, concerning an employed inventor‘s claim to transfer the invention in accordance with Section 16, Paragraph 1 of the Employee Invention Act (ArbEG). This article illustrates and analyses the current case law on employee inventions. (Anja Bartenbach, CBH Rechtsanwälte, GRUR Patent 2023, page 274)

Springboard profits - damages for non-infringing ancillary transactions in French and common law

A commercially significant value of patents can arise from the fact that, like a springboard, they allow revenues to be generated from services, supplies and accessories that are not patented. In addition, patents can help their proprietors to expand or maintain market share and to establish a certain price level – even beyond the patent’s term of protection. In the event of infringement, the question regularly arises as to how such revenues or economic advantages can be taken into account when calculating damages. These questions are discussed in other jurisdictions under the illustrative terms of ‘springboard profits’ or ‘effet tremplin’. This article presents English and French case law on these issues, supplemented by Canadian and Australian judgments. They can serve as illustrative material for the interpretation of § 139 Patent Act. Moreover, such a comparative approach is also of relevance for the interpretation of Art. 68 UPCA. (Benjamin Raue, University of Trier, GRUR Patent 2023, page 251)

The short life of the "Hüttermann maneuver"?

In the UPC_CFI_182/2023 decision, the UPC’s local division in Vienna has ordered that, unlike what has been suggested in my book (Hüttermann, Unitary Patent and Unified Patent Court, 2023, para. 510 et seq.), an opt-out should not be possible after filing a request for preliminary measures. Does this mean that the “Hüttermann maneuver” is not a valid option for patentees anymore? (Aloys Hüttermann, Michalski Hüttermann & Partner, GRUR Patent 2023, page 249)

The new exhaustion exception - what are legitimate grounds?

The new exhaustion provisions in Article 29 UPCA and Article 6 UPR include a provision that provides for an exception to the exhaustion for legitimate grounds. This article explores the historical development of this provision and analyses its scope, legal consequences, as well as potential practical scenarios. Legitimate grounds may primarily arise in the context of regional exhaustion. In contrast, consideration of an impact on the reputation of the patent holder, unwanted purposes of use, as well as quality, functionality, and safety aspects of the product, should be excluded. (Markus Gollard, GRUR Patent 2023, page 242)

The Huawei Technologies/ZTE proceedings - economic perspectives in negotiations and practical consequences

With Huawei Technologies/ZTE, the CJEU has established a binding procedure for licensing negotiations. Despite an intensive debate about the doctrine’s implementation and numerous national precedents, many issues are still unresolved. The controversy concerns the requirements for FRAND conduct, but also the consequences of FRAND violations. A closer look at the economic and game-theoretical fundaments of the Huawei Technologies/ZTE roadmap, in particular the conception of a channelling of the parties‘ negotiation strategies in the shadow of impending judicial sanctions, helps to better understand the CJEU‘s doctrine and provides practical answers to many open questions. (Tim W. Dornis, Leibniz University of Hanover, GRUR Patent, 2023, page 231)

Revocation actions before the Unified Patent Court

With its possibility for standalone revocation actions and counterclaims for revocation, the UPC system offers strong new options for defendants in infringement actions or companies seeking freedom-to-operate preemptively. This article outlines the procedural pros and cons of a standalone revocation action before the UPC versus a counterclaim for revocation in UPC infringement proceedings and discusses the most important differences between the new UPC revocation proceedings and known invalidity proceedings, such as EPO oppositions and German nullity proceedings. (Natalie Kirchhofer, Cohausz & Florack, GRUR Patent 2023, page 223)

Procedure for issuing preliminary measures at the UPC

The Unified Patent Court started its work on 1 June 2023. Just 22 days later, the Düsseldorf local division issued the first preliminary measures. This illustrates the outstanding importance of preliminary injunctions in patent law. Applicants can use them to enforce their rights particularly quickly. Conversely, a defendant may be threatened with the loss of their business within a very short time. For this reason, it is important for the parties to understand the procedure by which the UPC issues preliminary measures. This article explains the procedure and the principles of the court‘s decision-making, as well as differences and similarities to the German (national) preliminary injunction procedure. (Benedikt Walesch, Kather Augenstein, GRUR Patent 2023, page 197)

ASI and AASI – the status in German patent litigation today

So-called anti-anti-suit injunctions (AASIs) and anti-suit injunctions (ASIs) have a rather short history in German patent litigation, with the Regional Court Munich issuing the first AASI in a patent case in 2019. Since then, both ASIs and AASIs in Germany have been associated mainly with licensing disputes for standard essential patents. Recently, however, the Regional Court Munich issued an AASI in a life science case (GRUR-RS 2023, 24701 – Temporary Restraining Order) which is the first published decision confirming that AASIs from German courts are not confined to SEP disputes, and that German courts will apply the same legal standards known from SEP disputes to grant AASIs outside of SEP litigation. Although the wave of AASI decisions from German courts seems to have subsided, it appears that AASIs are an instrument of German patent litigation that are here to stay. The purpose of this article is to provide a brief overview on where German patent law stands on ASIs and AASIs today, to look beyond the borders of German patent law to the Netherlands and the WTO, and to provide a brief outlook on what can be expected for ASIs and AASIs in German patent disputes. (Corin Gittinger/Christian Rubenwolf, Freshfields Bruckhaus Deringer, GRUR Patent 2023, page 212)