The epi (which is the professional body representing European Patent Attorneys) provides a podcast series on UPC Case Law. Episode 1 relates to provisional measures. This is one of the many great resources for those who want to stay updated on UPC developments.
EPO Boards of Appeal decision abstracts
The EPO has started to publish abstracts of decisions of the Boards of Appeal on a monthly basis. The abstracts are accessible via the EPO’s appeal decisions webiste. This is a great resource for those who want to receive updates on recent case law, edited by the Legal Research Service of the Boards of Appeal, on a regular basis.
Claim construction in EPO proceedings
For several years, there has been divergence in the case law of the Boards of Appeal when it came to claim construction: Some Boards have taken the position that, when assessing patentability, the claims are to be construed in light of the description and drawings as a matter of principle. On the other hand, other Boards have taken the position that the description and drawings are to be considered for claim interpretation in EPO proceedings only in certain cases, namely when the claim wording is unclear or ambiguous.
The recent Boards of Appeal decision T 0439/22 has referred this matter to the Enlarged Board of Appeal. The referral questions are as follows:
1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
These questions also affect many pending proceedings.
The president of the EPO has decided that proceedings before the examining and opposition divisions should continue (Notice from the European Patent Office dated 1 July 2024). This serves the proper functioning of the EPO and for legal certainty.
BGH “Variationsnut” – Claim Construction
In its decision X ZR 12/22 dated 12 March 2024 – Variationsnut (“varying groove”), the German Federal Supreme Court held that a term used in two different claim features of the same claim may have to be construed differently, if the technical functions of the two claim features indicate this to be necessary.
This decision is illustrative of the importance of technical considerations in the German patent court system: The courts strive to make technical sense of the claimed invention with a mind willing to understand, even if the claim wording may not be perfect.
Soccer-related UPC proceedings
With the European soccer championship about to start in June, it is interesting to note that an application for provisional measures pursuant to R. 206 UPCA was lodged recently based on EP 1 944 067. The patent relates to a technique of detecting an offside situation in a soccer match.
The Union des Associations Européennes de Football (UEFA) is one of the co-defendants.
The matter is pending under the official case number ACT_16267/2024.
UPC infringement action before CD
An infringement action was lodged against Microsoft Corporation before the Central Division (CD) of the UPC. The matter is pending under case number ACT_18406/2024.
This appears to be the first infringement action lodged with the CD.
By way of background, Art. 33(1) UPCA establishes two possible venues for bringing an infringement action against a defendant that has its principal place of business outside the territory of the Contracting Member States: The infringement action against such a defendenat can be brought, at claimant’s choice, before (i) the local division or the regisional division of a state where the alleged infringement has occurred, or (ii) the CD. Thus, for defendants for which there is no venue in accordance with Art. 33(1)(b) UPCA, Art. 33(1) UPCA establishes an alternative venue (the CD) before which the action can be brought.
IP for securing funding
The EPO event “Bringing cleantech innovation to market”, a recording of which will be made available by the EPO shortly, addresses inter alia the EPO’s new economic study shedding light on the challenges faced by companies aiming to bring clean technologies to the forefront. The study was prepared by the EPO jointly with the European Investment Bank (EIB).
One important take-away for me was that the study affirmed how important it is for (young) companies to have IP to secure funding (also from, but not limited to, VC).
Please get in touch if you are in the process of setting up your own firm or have already done so, and want to learn more about the various types of IP that exist as well as existing initiatives available to financially support companies in the process of obtaining IP.
EU design legislative reform
Both the EU design regulation and the EU design directive are likely to be modified in the near future. If you want to learn more, check out this very interesting webinar recording of the EUIPO.
One important aspect of the amendments is that (somewhat similarly to the changes made to the trademark regulation and directive a couple of years ago), the new regulation and directive will allow IP stakeholders to more easily obtain adequate design protection for designs that can be represented in a (modern) electronic register, without being necessarily limited to seven graphical representations per designs. Examples where this is important include video sequences.
Easter-related technology & IP
Ever wondered how Easter Eggs are being created and delivered? Then you may want to check out the set of Easter-related patents on the website of the German Patent and Trademark Office (GPTO).
Search report for patent application deemed to be withdrawn
In a recent decision 1 W(pat) 11/23, the German Federal Patent Court held that the German Patent and Trademark Office (GPTO) has to establish a search report for a patent application that is deemed to be withdrawn, provided that applicant sets forth a legitimate interest in obtaining the search results. The decision orders the GPTO to establish the search report prior to expiry of the priority term.
This decision both reflects the importance of the official search results for applicants and corroborates the importance of the official search results to be established in due time.
By way of background, a German national patent application is deemed withdrawn (as in the decided case) inter alia when it serves as basis for a priority claim of (a) a further national German patent application or (b) a PCT application filed via the GPTO as Receiving Office without exempting the designation of Germany. Still, applicant can (and often does) have a legitimate interest in a timely search report even in cases in which a convention application was already filed. For illustration, it may be prudent in many cases for applicant to modify the claims and/or the overall disclosure of a (still further) convention application, taking into account the search results.