JUVE Patent

Inspection and main proceedings before the UPC

Successful patent litigation usually depends on proof of the alleged infringement. For staple products, spare parts, and other objects that can be purchased without much cost and effort, it is usually not difficult to get hold of an infringing item in order to present it to the court. However, if large and/or expensive machines, systems, or production processes are concerned, an inspection is often the only option to prove an infringement. In order to reduce the risk of litigation in such cases, the inspection should precede the court proceedings. This article deals with the relationship between inspection and a subsequent patent infringement lawsuit. (Michael Nieder, GRUR Patent 2024, page 145)

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On the legal status in injunction proceedings before the UPC after the first substantive decision of the Court of Appeal - 10x Genomics II

Following the widely discussed decision of the Munich local division in the case of 10x Genomics vs. NanoString, the Court of Appeal has now delivered its verdict. The first substantive decision of the UPC Court of Appeal establishes benchmarks. Although it overturns the specific decision of the first instance, the Court of Appeal essentially confirms the standard developed by the Munich local division for the interpretation of the legal concept of "sufficient degree of certainty". Although the decision clearly seeks to provide guidance in some places, the legal principles established on the question of legal validity within PI proceedings are surprisingly brief at first glance. At second glance, the decision appears to be a pragmatic application of the applicable law. Nonetheless, this represents – at least in terms of legal theory – a significant delineation from German PI case law since the “Harnkatheterset” ('urinary catheter set') decision that should not be underestimated. It remains to be seen to what extent both approaches will not in fact lead to corresponding results in practice. (Paul Szynka/Hannes Jacobsen/Christoph Schröder, GRUR Patent 2024, page 138)

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The Editors’ Choice – UK High Court of Justice [2023] EWHC 2948 (Ch)

The author provides insights into the issue of patentability of ANNs (artificial neural networks) in UK patent law. As the author explains, the High Court distinguishes between computer programs and models in trained ANNs. However, further extending the perspective, the author also highlights that the court did not touch on other questions of technical effect, especially whether models of trained ANNs should be regarded as mathematical methods, nor did the court even mention questions of inventive step. (Herbert Zech, GRUR Patent 2024, page 122)

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The Editors’ Choice – UPC, Court of First lnstance, Central Division (Paris), UPC_CFI_15/2023

The author provides insights into the first ruling on the issue of who is the 'same' party within the meaning of Art. 33(4) UPCA. Furthermore, she elaborates on the Paris Central Division‘s general insights into its rather liberal stance on revocation actions filed by 'straw companies'. Also, the author extends her arguments on the procedural perspective explaining how the court dealt with matters such as the preliminary objection procedure, admissibility of late-filed documents, requests for postponement of the hearing date due to 'last-minute submissions' and security for legal costs. (Natalie Kirchhofer, Cohausz & Florack, GRUR Patent 2024, page 113)

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Damages claims in the unitary patent system

In German patent infringement proceedings, the claim for damages does not – at least compared to international proceedings – usually play a very prominent role. This could change for proceedings before the Unified Patent Court (UPC), as Article 68 of the Agreement on a Unified Patent Court (UPCA), which came into force on 1 June 2023, covers the “award of damages” in a considerably different way than Section 139 (2) German Patent Act (PatG). (Ronny Hauck/Sebastian Dworschak, GRUR Patent 2024, page 106)

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The 'inventive step' according to the Federal Court of Justice and the EPO

The article examines the extent to which there are similarities and differences between the case law of the German Federal Court of Justice and the Boards of Appeal of the EPO regarding the examination of inventive step. A number of cases are discussed in this context. (Hermann Deichfuß, GRUR Patent 2024, page 94)

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Addressing concerns surrounding the EU proposed regulation on standard essential patents

On 27th April 2023, the European Commission introduced the Proposal for a Regulation on SEPs, which is currently being discussed at the European Parliament. This proposal has received several criticisms. Commonly criticised aspects include the creation of a competence centre at the EUIPO, the centralised SEP registry and database leading to increased disclosure requirements, essentiality checks, an aggregate royalty determination process, and an out-of-court dispute resolution mechanism to negotiate FRAND terms. Through this short note, the authors aim to counter some of these criticisms. (Enrico Bonadio/Shreya Sampathkumar, GRUR Patent 2024, page 74)

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IP pledges as an instrument for managing the pandemic

IP pledges have been endorsed to overcome barriers to the use of patented technologies urgently needed to combat the SARS-CoV-2 pandemic. An exemplary analysis of the Open Covid Pledge (OCP) is presented here. While the organisers made a valiant attempt to provide a platform for indicating the availability of patents at short notice and a plethora of patents have been pledged, technical deficiencies make it difficult for users to systematically search the portfolio. The limited term and field of the licence may not compromise the pledge’s ability to encourage academic research, but imply considerable legal uncertainty for companies developing and manufacturing patented products which may be used for other purposes. Not in the least, the pledge has failed to appeal to owners of patents that are crucial and tailor made for fighting the coronavirus, such as vaccines. (Carsten Richter, GRUR Patent 2024, page 69)

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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)

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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)

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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)

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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)