Category: Patent

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

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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.

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Injunctive relief

Section 139 of the German Patent Act deals with the most important consequences of a finding of patent infringement, including injunctive relief. In the 2021 revision of the German Patent Act, section 139 was revised. Revised section 139(1) s. 3, 4 now specifies that there can be circumstances in which patentee is not entitled to injunctive relief. There was (and still is) some uncertainty as to how much of a change this amendment means as compared to the previous version which did not include these exceptional provisions.

A recent decision of the Regional Court Düsseldorf provides guidance on section 139 of the German Patent Act as revised in 2021. In the decision LG Düsseldorf of July 7, 2022, 4c O 18/21 – Sofosbuvir, the Regional Court Düsseldorf held that section 139(1) s. 3 is applicable only in very exceptional circumstances and only subsidiarily to compulsory license proceedings. Thus, based on this decision, it appears that injunctive relief is still available in all those cases in which the infringing party has not initiated compulsory license proceedings.

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EPO – strawman’s appeal fee

A new EPO Boards of Appeal decision T 84/19 deals with an interesting question relating to appeal fees. The decision holds that an opponent who is a natural person or otherwise entitled to benefit from the reduced appeal fee does not have to pay the full appeal fee, even if there is a secret sponsor (akin to the ‘real party in interest’ in post-grant proceedings in other jurisdictions). This holds as long as the opposition does not constitute a circumvention of the law regarding the entitlement to pay a reduced appeal fee.

By way of background for the readers familiar with or otherwise interested in USPTO post-grant proceedings: According to decisions G 3/97, G 4/97, it is not required that the ‘real party in interest’ be named in EPO opposition proceedings. Thus, the situation may (and does) occur in which an opponent as party to the EPO proceedings may be different from the person interested in the revocation or amendment of the patent.

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EPO Opposition Matters 2022 conference

Very interesting professional training event at the EPO – Opposition Matters 2022. Lots of practical advice as regards opposition proceedings in general, and specifically oral proceedings and amendments of a party’s case. Very engaging presenters and very useful practical tips. The event materials and recordings of the key presentations will be made available at the EPO e-learning center. You may want to check this out if you are involved in EPO oppositions.

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Judges panel in UPC conference

The EPO co-hosted a conference on the new unitary patent system in the mid- November 2022. Part of the conference was a judges panel featuring some of the prominent figures that were recently elected to the UPC bench. Various topics were discussed. Just some examples: There appeared to be consensus among the panelist judges that it will be rare for a revocation counterclaim to be separated from infringement proceedings and be sent to the central division (unless there are plural revocation counterclaims before different local/regional divisions). The judges’ current views appeared to be less aligned with regard to issues such as disproportionality of injunctive relief. A recording of the conference is still available online – worth watching if you are interested in this topic.

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EPO Case Law Conference 2022

Interesting (online) educational event at the EPO yesterday and today on the case law and practice of the Boards of Appeal.

As regards procedural aspects, appellants and defendants should be aware of the way in which the Boards apply the rules relating to late-filing (Art. 12, 13 RPBA 2020). See, e.g., T 2843/19, T 1707/17, and T 1869/18. While a party to appeal proceedings has a right to react to new developments (Art. 113 EPC), the party must exercise this right as soon as possible in the proceedings. Thus, it is advisable to react in a timely manner to new developments that may be brought about by the other party’s grounds of appeal or response brief, or the Board’s communication under Art. 15(1) RPBA 2020.

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US applicants – beware of the EPO’s ‘due care’ criterion

EPO Board of Appeal decision J 8/21 discusses the relevant criteria for re-establishment of rights (restitutio ad integrum). In the matter under appeal, the USPTO as Receiving Office of a PCT application decided to restore the right of priority based on the finding that the criterion for restoration applied by it was satisfied, namely that the failure to file the international application within the priority period had been unintentional. This decision of the USPTO is not effective in the EPO which applies the stricter ‘due care‘ criterion (R. 49ter.1(b) PCT). The Board held that the EPO was right in refusing the request for re-establishment of rights by the Designated Office under R. 49ter.2 PCT when applying the ‘due care‘ criterion. The Board noted that, contrary to applicant-appellant’s arguments, there can be different results when two different patent offices apply different criteria, and that this is inherent to the PCT system.

The decision illustrates that applicants should be aware of the fact that a re-establishment of rights by the USPTO as Receiving Office under the ‘unintentional’ criterion is not effective in EPO proceedings which applies the ‘due care’ criterion.