Author: Florian Meier

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UPC time considerations

The UPC has been in operation for 100 days. One of the interesting questions in the early case law relates to whether the time of day is to be taken into consideration when determining which of several events happened first. In a webinar, the colleagues of Hoffmann Eitle have provided insights on such a situation, in which a revocation action (with the central division) and an infringement action (with a local division) were filed on the same day but with a time delay of 19 minutes between them. In the proceedings dealing with the admissibility of the revocation action, the Court had to consider whether time of day is to be taken into consideration for determining which action was filed first (with the deciding decision apparently being of the opinion that time of day matters is relevant when determining which action was filed first, in the interest of legal certainty).

This rationale is interesting in consideration of the fact that (i) in many other jurisdictions, it is only the date that matters (and some Courts, such as the German Federal Patent Court, do not appear to be set up for determining at which time of day an action is received when filed in paper form); (ii) may stakeholders are inclined to adopt a “first to act” strategy (in particular if they believe a local division to be more patentee-friendly than the central division, as also discussed in Hoffmann Eitle’s webinar today), with the time of day being potentially decisive for who was first to act; and (iii) the “smallest unit of time” for determining which event happened first (time of day or date only) can be relevant for scenarios other than infringement / revocation actions, such as determining whether an opt out or UPC revocation was effective earlier (relevant for the admissibility of a UPC revocation action).

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EPO T 1946/21 – transfer of priority right

In the recent Board of Appeal decision T 1946/21, Board of Appeal 3.2.03 held that it is sufficient for a transfer of the priority right to be effected on the filing date of the subsequent application, provided that applicant/patentee can demonstrate that the transfer had been effected at the time at which the subsequent application was filed. The Board did not follow appellant’s argument that the transfer had to be effected at the latest on the day preceding the day on which the subsequent application was filed.

Beware that (i) the EPO Guidelines (section A.III.6 in GL version 2023) include language (“the transfer of the application including the priority right (or of the priority right as such) must have taken place before the filing date”) that suggests that stricter criteria may apply, and (ii) national case law of EPC member states (such as BPatG 11 W (pat) 14/09, point II.B.2 a cited in T 1946/21) may require the transfer to have taken place at the latest on the day preceding the filing date.

Thus, if time allows, it is prudent to mitigate potential issues relating to the validity of the priority claim in Europe by (a) effecting a transfer of the priority right to the applicant of the subsequent application at least on the day before the filing date, or (b) filing the subsequent application with the applicant of the priority application being named at least as a co-applicant in the subsequent application.

T 1946/21 also includes interesting passages relating to partial priority issues in light of G 1/15.

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Enabling disclosure for AI inventions

In decision BPatG 19 W (pat) 32/20, the German Federal Patent Court affirmed a decision refusing a German patent application for lack of enabling disclosure. According to the reasons of the decision (in particular section II.5.2(3)(iii)), the Senate considered the structure of the AI model to be insufficiently disclosed. The Senate also considered the information on the training data to be insufficient, in particular when it comes to how the training data are used to train the ANN structure to provide the desired output quantity (relating to wear of a technical system).

By way of background, it is rare that an application or patent is considered insufficiently disclosed by the German Patent and Trademark Office or by the German Federal Patent Court. This applies in particular in the arts that are considered “predictable arts” (physics, mechanics, etc.). The decision reflects a strict practice with regard to AI-based inventions, as also evidenced by the EPO Boards of Appeal.

There appears to be a tendency in the office practice (in particular in the EPO Boards of Appeal) to affirm refusals of applications or revocations of patents for AI-based inventions, based on lack of inventive step, when the invention relates to using AI in a novel, specific field of use. The office’s rationale is often that using AI is a general trend and the skilled person would consider the use of AI in a novel field without exercise of inventive skill. Little consideration appears to be given on the burden imposed on the skilled person for training an AI model to make it amenable for the novel use. There appears to be a discrepancy between (a) such a lack of inventive step rationale and (b) the strict criteria imposed by the office practice and the EPO Boards of Appeal / the German Federal Patent Court (see cited decision) on the disclosure of an application/patent. One can only hope that the EPO, GPTO, and BPatG will find a more balanced view in the future.

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Acting UPC law firms

Last week, I attended a very informative seminar on UPC proceedings hosted by one of the major German mixed patent law firms. The presenters emphasized that they are not only registered UPC representatives (of which there are many), but also acting UPC representatives in the sense that they are presently engaged in proceedings before the UPC. As of today, only few registered UPC representatives are already engaged in ongoing UPC proceedings.  

Out of curiosity, I checked the names of the law firms acting for plaintiffs in infringement actions before the UPC, as of today (July 10, 2023). I limited my review to the main actions (of which I can access a total of 16 in the register as of today). Here is my count (please let me know if I have inadvertently missed out on your firm, in which case I will update). The list is sorted by number of main actions. For firms having filed an equal number of main actions, the firms are listed alphabetically.

Bardehle: 4 main actions

Arnold Ruess, Bird & Bird, Bonelli Erede, Clifford Chance, eip, Finnegan, Gleiss Große, Grünecker, Gulliksson, Roschier, Sandart, Wildanger: 1 main action each

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Number of UPC proceedings

The UPC has opened its doors for field operation more than two weeks ago. When checking the UPC public proceedings register in the CMS, I can see 12 proceedings (three revocation actions and nine infringement actions). The nine infringement actions include three infringement actions in Munich, two in Dusseldorf, two in Hamburg. This suggests that either the CMS electronic register is not fully operational or the case numbers are much lower than the 100 cases expected to be filed within the first week according to the (optimistic) ipwatchdog blog of 31.5.2023 entitled “Countdown to the Unified Patent Court, Part V, Five Predictions for the UPC on Day One.”

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UPC isolated revocation action

When testing some of the functionalities provided by the UPC CMS search tools, I came to realize that an isolated revocation action (i.e., a revocation action that is not a revocation counterclaim in an infringement action) has been lodged with the UPC central division in Munich on June 2, 2023, i.e., the second day of field operation. The patent is a bundle patent (i.e., no unitary effect, as it has been granted prior to June 1, 2023).

The value in dispute is 100 Mio. EUR. A lawsuit between the same parties regarding a U.S. patent family members of the patent now challenged before the UPC was recently decided by the U.S. Supreme Court in Amgen vs. Sanofi. The U.S. case dealt with the interesting question of enabling disclosure over the full claim scope or, stated differently, the degree to which independent claims may be generalized as compared to the specific embodiments (which were considered to be disclosed in an enabling manner in the U.S. case).

This is a worthy start for the UPC system, which clearly attracts interesting cases.

It is a bit unfortunate that, notwithstanding all efforts to set up a modern, all electronic system, the revocation action appears to have been filed in paper form pursuant to R. 4.2 UPC (UPC CMS not working properly).

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Technically qualified judges at the UPC

A couple of days ago, one of the technically qualified judges (a colleague from France who is highly respected and very well-known in the community) announced that he will resign from the position as technically qualified judge (TQJ). In his view, the recently published UPC Code of Conduct makes it difficult to discharge of the duties as a TQJ in a manner that is compatible with an attorney’s work for his/her clients.

While this resignment is a significant loss for the bench of the UPC, this ethics and level of reflection is to be applauded. It also contrasts nicely with the “the part-time judge system works for the Swiss Federal Patent Court, hence it is going to work for the UPC”-attitude that I have sometimes heard in the past. (Just to be clear: Of course, such a system can work, but concerns as regards potential conflicts of interest are to be taken seriously.) It will be interesting to see whether this resignment will remain an isolated event or whether more TQJs are going to re-consider the situation in the weeks or months to come.

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UPC Case Management System (CMS)

At present (mid-May 2023), the UPC CMS appears to have difficulties handling the number of opt-out requests that are being submitted. This does not appear to be a great start for the new system:

First, while the number of opt-out requests appears to be substantial (and appears to grow significantly as June 2023 approaches), this type of request does normally not involve significant data amounts. This leaves one wondering how well equipped the CMS is to handle the potentially simultaneous submission of several voluminous briefs in UPC field operation from June 2023.

Second, the number of opt-out requests appears to illustrate that there are many applicants and patentees who, at least as of now, are not yet convinced by the new system.

On the bright side, applicants and patentees appear to be aware of the options provided by the new system, and appear to pro-actively take the steps they deem appropriate for their patent portfolio.

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Patent with Unitary Effect

EPO search form

I just realized that the EPO has already updated the European Patent Register search form in view of the possibility to file a request for a unitary effect. The updated search form provides search fields for entering the request date and the registration date for unitary effect.