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.
June 2024
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)
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)
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)
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)
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)
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)
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)
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)
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)
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)
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)
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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