Category: Patent

Patent related topics (including UPC, EP and DE practice)

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UPC updates

The epi’s podcast episode INSIGHT epi UPC Case Law – Episode 3 provides interesting updates on UPC-related developments. The following aspects were particularly interesting to me:

First, as highlighted by one of the presenters (who reported on his first-hand experience when filing a request for file inspection with the Nordic-Baltic RD), the jurisprudence of the divisions appears to be influenced by the judge’s national legal background. This might be one of the reasons as to why the first file inspection request with the Nordic-Baltic RD was more successful than the two concurrently pending file inspection requests that were filed by others with the CD Munich.

Second, the CMS appears to be structured such that it cannot cope with some procedural situations. With regard to file inspections, CMS did not appear to work properly for patentee’s appeal against the RD’s decision to grant access to (a redacted version of) the pleadings.

As always, I can only recommend listening to this episode of INSIGHT epi.

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First UPC litigation ranking by JUVE Patent

Many law firms and (potential) litigants eagerly awaited the first UPC litigation ranking recently published by JUVE Patent.

The ranking of December 2024 has revealed a surprising trend: some of the top patent law firms, renowned for their national prosecution and litigation work, are not to be found in the UPC ranking. This includes firms that have played a pro-active role in the preparation of the new system (such as BOEHMERT & BOEHMERT with Prof. Goddar) and firms that are ranked in the top tier for national litigation (such as df-mp).

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Eletronic filings with the GPTO

As widely communicated by the EPO, the EPO smart card will be faded out for the EPO’s online services.

Practitioners who use the EPO smart card for the GPTO’s online services (in accordance with §3(2) numeral 2 of the Regulation for Electronic Filing with the GPTO) should be aware that the EPO smart card can no longer be used for signing in DPMADirektPro after December 31, 2024 (see GPTO information on digital signatures). This applies irrespective of the expiry date indicated on the EPO smart card. The 2FA, which the EPO has successfully introduced as new authentication mechanism, will not be available for procedural acts in the GPTO’s filing software DPMADirektPro.

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GPTO becomes WIPO DAS depositing office

The German Patent and Trademark Office (GPTO) started acting as depositing office for WIPO DAS effective 25 November 2024. Additional information can be found in the official notice from the president and on the WIPO DAS country website.

Two notes for practitioners: First, as of now, only patent and utility model applications will be deposited by the GPTO in WIPO DAS. Hopefully this will be extended to design and trademark applications later. Second, the process for requesting deposition in WIPO DAS is different from, e.g., the process known to European practitioners from EPO and EUIPO priority applications: For priority applications filed with the GPTO, it is required to file a separate request using Form A9164 after the application has been filed. Please find a link to the version of Form A9164 available as of writing this blog contribution .

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EPO seminars

As the year draws to a close, the EPO is going to host several interesting seminars, including:

Opposition Matters 2024: According to the EPO, “Opposition Matters is the EPO’s key event for professional users to keep abreast of the latest and most relevant developments in opposition proceedings.”

Litigation Matters 2024: According to the EPO, “Litigation Matters … is devoted to the latest practices of patent litigation in Europe, with particular attention to the UPC litigation.”

Registration is already open. These events represent a great opportunity to catch up with recent developments. Both events are free of charge and organized by the EPO Academy.

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Adaptation of the description in EPO proceedings

It is rare for a Board of Appeal decision to spark widespread interest on (business and/or IP-related) social media. This was different last week, when many patent practitioners enthusiastically posted about T 0056/21 of 04 October 2024.

Datasheet of T 0056/21

The headnote of this decision reads:

“In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.”

Some have suggested that T 0056/21 will significantly change the EPO’s practice when it comes to adaptation of the description. This will remain to be seen.

Roche’s IP department and the counsel handling T 0056/21 deserve praise for seeking clarification on this issue. This even more so, as the adaptation of the description appears to be very dear to some examiners in light of the quality discussions. And Board 3.3.04 is to be applauded for reasons of the decision that are not only comprehensive, but are guided by what the drafters of the EPC had in mind when it comes to clarity.

Not everyone reading the various posts on T 0056/21 might be aware of the fact that the same applicant (Roche) has previously pushed this matter to the Board of Appeal. The previous appeal has resulted in T 1989/18 of 16 December 2021. While the latter decision does not have a headnote, the reasoning in points 4-13 of T 1989/18 reaches conclusions similar to those in the headnote of T 0056/21. T 1989/18 did not appear to do much to alter the EPO’s practice as regards the adaptation of the description. Hopefully, Roche (or other applicants) will continuetheir commitment to resolving the question of whether, and if so to what degree, an adaptation of the description to amended claims is required. At least in US proceedings, all IP stakeholders appear to be comfortable working with a description that is not modified in light of claim amendments during prosecution.

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2024 Nobel prizes

Two of the 2024 Nobel prizes relate to machine learning (ML) and artificial intelligence (AI), namely those for physics and chemistry. It is astounding how ML/AI techniques are transforming various fields of technology, reshaping the ways we interact with and manage complex systems. One of the most significant impacts can be observed in control operations of technical systems, where AI algorithms enable real-time decision-making and optimization. These technologies allow for more precise control of processes in industries such as energy, manufacturing, quality control, and transportation. ML models can identify patterns and use them for identifying the most suitable control actions. In the realm of medical technology, AI is also proving to be a game-changer. From diagnostics to personalized medicine, ML harnesses data to improve patient outcomes and streamline healthcare delivery.

The EPO has long recognized that a technical contribution can be made by AI/ML inventions, as reflected in the Guidelines. This should encourage innovators to seek patent protection for their AI/ML-based inventions. As we move forward, the integration of ML and AI across various domains will continue to drive innovation.

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Search at the EPO

In the September 12, 2024 episode of the EPO’s Talk Innovation podcast, the focus is on patent quality. One highlight is a new step being taken by the European Patent Office (EPO) to improve the thoroughness of search reports. Starting in November 2023, these reports will be shared with members of the upcoming Examining Division and their team manager. This change aims to make sure that the search reports are as comprehensive as possible. The goal is to minimize situations where important prior art is only introduced years into a case, even when the patent claims haven’t changed much.

The episode also discusses other efforts to improve consistency in procedures. For example, the EPO is working to help Examiners better compare their practices regarding the number of communications sent out before a case goes to oral proceedings. These measures are set to enhance the overall quality and efficiency of the patent examination process.