JUVE Patent

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)

Image: ©Mathieu Klos/JUVE Verlag

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)

Image: ©f11photo/adisa/ADOBE STOCK

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)

Image: ©UPC

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)

Image: ©fran_kie/ADOBE Stock

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)

Image: ©Wanan/ADOBE Stock

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)

Image: ©amorn/ADOBE Stock

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)

Image: ©UPC

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)

Image: ©John/ADOBE Stock

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)

Image: ©sborisov/ADOBE Stock

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)

Image: ©AA+W/ADOBE Stock

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)

Image: ©nmann77/ADOBE Stock

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)

Image: ©Julien Eichinger/ADOBE Stock

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)

Image: ©rangizzz/ADOBE Stock

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)