Author: Florian Meier

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EPO acceleration of opposition proceedings

The EPO will accelerate opposition proceedings when an infringement or revocation action has been instituted before the UPC. See the EPO News of 22.02.2024 and EPO OJ 2023, A99. The EPO deems that “concluding the EPO parallel opposition proceedings swiftly fosters legal certainty and procedural efficiency, as well as high quality and uniformity in the European patent system.”

I am interested to learn whether divergence between the EPO and the UPC in parallel opposition/revocation proceedings can indeed be avoided going forward.

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EPO administrative fee changes from 01 April 2024

Various changes to the EPO’s fee structure will enter into effect on 01 April 2024. See the EPO’s News Website. Both the reduced fees for SMUs and the increase of some renewal fees have been widely discussed; the visitors of my website will have read about this on, e.g., Juve Patents, the Kluwer patent blog and various LinkedIn posts from valued colleagues working in the patent profession.

One issue that appears to have received less attention is that the EPO’s recent decisions also affect the administrative fees (which tend to receive less attention as compared to the fees associated with filing, search, examination, and renewals). Importantly, the fee for registering a transfer will be reduced to nil provided that the request is filed via MyEPO. See EPO OJ 2024, A5 – fee code 022, item 1.1.

While one might think that the present fee of 120 EUR is not a big deal, the EPO applies this fee per application or per patent, even if the same evidence for the transfer is used in all of the applications/patents. In the case of a merger or demerger of companies, registering the transfer of applications and patents (for the latter the patents during the opposition period or in oppositions) can often result in total administrative fees of several hundred thousand Euros in the currently active administrative fee regime.

It is rare for me to applaud the EPO’s fee structure and the continually increasing fee amounts, which occasionally make me wonder whether the EPO is about to price itself out of the market (in particular when compared to, e.g., the GPTO’s fees). The reduction in the administrative fee for registering a transfer, while triggered by the desire to incentivize the use of MyEPO, is in my view a great step, when considering how much work can be involved in checking the entitlement of the signatories of a transfer declaration (e.g., when a chain of authorisations needs to be verified to affirm the signatory authority of the signatories). The reduction in the administrative fee for registering a transfer, when filed via MyEPO, will make it much easier to convince applicants/patentees that it is generally a good idea to maintain the EPO register data aligned with material ownership when a transfer has taken place.

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BPatG: Opponent must be clearly indicated

The German Federal Patents Court (BPatG) decision 20 W (pat) 8/23 dated 15 November 2023 illustrates how important it is that the identity of a party to the proceedings be clear from the outset. The BPatG affirmed that an opposition is inadmissible if the identity of the opponent cannot be derived from the opposition. In the decided case, a patent attorney signed the opposition brief and argued that he was the opponent. The BPatG did not concur with this reasoning.

The official headnote reads, in English translation:
“If a patent attorney files an opposition against a patent in his or her own name (also as a “straw man”), his/her role as the sole opponent must be clear from the information provided within the opposition period, either directly or by way of interpretation. The mere signing of the notice of opposition by the attorney, who usually acts on behalf of third parties, is not sufficient [to clearly indicate that he/she acts not as representative but as party to the proceedings].”

This signifies the importance of adding a passage as to the identity of the opponent in an opposition brief filed with the GPTO (which – other than the EPO’s form 2300 – does not provide an official form reminding the party of the information required for an opposition to be admissible).

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Community design for modular system component

In the judgment of 24 January 2024 in T‑537/22, the General Court (GC) held that a registered Community design for a building block of a modular system was valid. The GC affirmed the Board of Appeal’s decision which found that even if all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of that product, within the meaning of Article 8(1) of the Community Design Regulation, the contested design could not be declared invalid as it fell within the exception protecting modular systems referred to in Article 8(3) of the Community Design Regulation (points 16 and 74 et seq. of T-537/22).

This judgment of the GC is the second judgment relating to the invalidity proceedings, with the GC highlighting the importance of Art. 8(3) of the Community Design Regulation in T-515/19. The recent judgment T-537/22 confirms (a) that registered designs can be powerful intellectual property assets, and (b) that Article 8(3) of the Community Design Regulation provides an exception of great practical importance applicable to various kinds of modular systems (and not only vehicle repair parts). This is in line with recital (11) of the Community Design Regulation which stipulates that “mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection.”

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EPO validation agreement

A validation agreement between the European Patent Organisation and Georgia entered into force on January 15, 2024. Thus, it is now possible for European patent applications and patents granted by the EPO to be validated in the Republic of Georgia. For more details, see the EPO website.

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BGH on damages (patent infringement)

A recent decision by the German Federal Supreme Court (BGH) (decision of 14 November 2023 – X ZR 30/21 – cushioning conversion machine) deals with damages in patent infringement proceedings in Germany. An English translation of the decision was made available on LinkedIn by plaintiff’s representative (Müller-Stoy of Bardehle).

The German Federal Supreme Court held that damages, when calculated based on infringer’s profits, generally are to take into account all profits that are causally related to the infringement of the patent. This applies even when such profits are generated by tsale of consumables or other ancillary devices or services, which by themselves do not consitute an act of direct infringement (§ 9 German Patent Act) or contributory infringement (§ 10 German Patent Act). All that is required is that the infringer’s profits are causally related to the infringement. An example are consumables sold by the infringer as a result of the patent infringement; the profits are to be taken into account even when such consumables do not contribute to the technical effect of the patent and/or do not interact with the non-obvious features of the claim.

This decision can be expected to have major impact on patent litigation in Europe and will add to the attractiveness of Germany as a venue for patent litigation.

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Claim construction at the UPC

In decision UPC_CFI_292/2023, the Local Division (LD) Munich of 20/12/2023, the UPC rejected a request for a preliminary injunction. According to the first headnote of the decision, claim amendments made during prosecution can aid the claim construction . In the decided case, the LD Munich was of the opinion that a claim amendment introduced during prosecution defined an original claim feature in greater specificity and, thus, had to be construed more narrowly than suggested by claimant.

In an article published on LinkedIn, a fellow German patent attorney remarked that he considers the first headnote of this decision to represent a significant change as compared to the national German claim construction practice. I don’t think that the decision of the LD Munich is a significant departure from German national practice. While German courts have traditionally not relied on file history estoppel, several decisions handed down by the German Federal Supreme Court (BGH) in recent years – such as BGH decision of 14/06/2016 – X ZR 29/15 – Pemetrexed and BGH decision of 10/05/2011 – X ZR 16/09 – Okklusionsvorrichtung (“occlusion device”) – held that claim amendments made during prosecution can be a useful tool for claim construction. The decision by the LD Munich appears to be in line with this German national case law (which in itself represents a shift towards the national practice of other EPC contracting states that apply the principles of file history estoppel).