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JUVE Patent

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.

December 2023

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)

November 2023

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)

Must the allocation of competences among the UPC divisions conform to the Brussels Ibis regulation?

Different views have emerged in literature as to whether the allocation of competences among the divisions of the UPC pursuant to Art. 33 UPCA must conform to the principles of the Brussels Ibis Regulation — an issue that is material, e.g. when the central division is called upon to hear an infringement action. This piece presents the conflicting arguments, and comes to the conclusion that the Brussels Ibis Regulation is not to be considered when determining a division’s competence. (Leonard Hollander, Hogan Lovells, GRUR Patent 2023, page 205)

On the international jurisdiction of the UPC

The University College London (UCL) has established an annual lecture in honour of the late Sir Hugh Laddie (Sir Hugh Laddie Lecture). This year´s lecture was held by Rian Kalden, presiding judge at the second panel of the UPC Court of Appeal. We are convinced that her lecture provides rich material for thought and discussion. We, the editors, have limited our work to some references concerning the court decisions and legal instruments referred to by the author. (Rian Kalden, UPC Court of Appeal,GRUR Patent 2023, page 178)

Writs of Protection at the UPC - Initial Practical Tips and Experiences

With the start of the Unified Patent Court, the question of whether it is advisable to file protective letters has become an important issue. This article highlights the differences and similarities between protective letters in German patent infringement proceedings on the one hand, and in proceedings before the Unified Patent Court on the other. It addresses selected practical questions that arise in connection with protective letters before the Unified Patent Court, in particular the handling of confidential information. Finally, the article provides practical instructions on drafting and filing protective letters in the case management system. (Clara Berrisch; Hoyng ROKH Monegier, GRUR Patent 2023, page 191)

Gathering evidence before the UPC

The following article takes a closer look at gathering evidence before the UPC. Therefore, the rules of evidence of the UPC Agreement (UPCA) and the UPC Rules of Procedure (RoP) are presented and analysed with regard to the burden of proof, the various measures of gathering evidence and the right timing. The means of evidence before the UPC include all means such as written evidence and testimonial evidence and include, inter alia, rules on disclosure and confidentiality measures. The article concludes that the different jurisdictions are united within the UPC and that the UPC provides a balanced system that will develop its practical standards and benchmarks in the coming proceedings. (Stanislas Roux-Vaillard, Miriam Gundt, Ruud van der Velden, Lea Gröblinghoff, all Hogan Lovells GRUR Patent 2023, page 209)

Milan or Madrid, as long as it's FRAND again?

In handing down its "FRAND Defence II" decision, The Federal Court of Justice has provided clear guidelines for the parties' obligations in negotiations on standard-essential patent portfolios and thereby eliminated a great deal of uncertainty concerning the FRAND defence. At the same time, however, this has also raised new questions for legal practitioners. For example, whether and how a patent infringer can still assert the FRAND defence if they did not initially fulfill their FRAND obligations. (Lars Hessmann, Jonathan Hechler, both Bird & Bird, GRUR Patent 2023, page 186)