The question of how likely it is to obtain injunctive relief against patent infringers will be a driving factor for the attractiveness of the UPC system. So, let’s have a quick look at the setting that the UPC system provides for injunctive relief. 

In substantive terms, the Agreement on a Unified Patent Court provides that a patent proprietor has the right to prevent any third party from making use of the invention. 

Article 63, however, which governs the powers of the Court, states that the Court “may” grant an injunction when it finds infringement. This clear wording suggests that the patent proprietor does not have an unconditional right to an injunction in any case, but that the Court has a certain degree of discretion of whether or not to grant an injunction in a specific case. In contrast to what has been known from national patent laws, such as Germany’s, the UPC system obviously does not provide for “automatic” injunctions. 

The interesting question will now be how the UPC will exercise its discretion. 
First of all, neither the UPC Agreement nor the Rules of Procedure stipulate which criteria are to be taken into account by the Court. 

As a primary source of law, the UPC will, however, have to take the Enforcement Directive into account, which says that a proportionality test is to be applied before injunctions are granted. As long as there is not yet any established case law of the UPC on exercising the proportionality test with regard to injunctions, it is likely that the UPC judges will apply this test as it has been developed in national case law. In German patent law, for example, the denial of injunctive relief due to proportionality considerations is reserved for truly exceptional cases. 

In summary, especially in the early days of the UPC system, as long as there is not yet any established case law, it is to be expected that the UPC will apply its discretionary power in a cautious manner and take a patentee friendly approach with regard to injunctions.

IP Experts

IP Quick Tip:Injunctive relief in infringement proceedings before the UPC

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AI such as Dall-E or ChatGPT has quickly become part of the every-day lives of many of us.

Are AI-based creations eligible for copyright protection? Which stance does European and U.S. copyright law take in this context? Which role do definitions and instructions play?

In our latest episode, our attorneys-at-law Dr. Philipe Kutschke and Dr. Jan Lersch answer these and other questions for you.

IP Insights: Copyrights and AI generated works of art

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Patent rights are territorial, i.e., they only apply in the countries where you've obtained legal protection. 

How to choose the right countries for patent protection?

In our latest episode, our patent attorney Preston Richard, LL.M. explains how to factor in your overall business strategy, market research, and IP enforcement mechanisms of national systems.

IP Quick Tip: How to choose the right countries for patent protection

For a deep dive into the Unified Patent Court, please visit: https://www.bardehle.com/en/upc-special

With the start of the UPC, the file wrapper estoppel became highly relevant, because some UPC member states do recognize the file wrapper estoppel in their legal systems, while others do not.

What exactly is the file wrapper estoppel? For which cases is it most relevant? How do the different countries of the Unified Patent Court handle the file wrapper estoppel?

In this episode, our attorneys-at-law Julia Bernatska and Dr. Tilman Müller answer these and other questions for you.

IP Insights: File wrapper estoppel

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While collaborations between different companies are more and more common, it is astonishing that jointly owned patents lead to legal issues and questions which are still unresolved and not taught in the textbooks. A playing field for us practitioners. Jan, you are one of these practitioners and regularly advise our clients in this field. Could you please give us a brief overview of such cases?

The good case is when both parties are aware of what they are doing: If they combine their knowledge and capacities on purpose and with a specific aim. For instance, we regularly advise clients on publicly funded R & D projects with clearly defined work packages, where it is known beforehand if and where joint inventions may be created. In these cases, the parties can define their future interests in the projected invention, predict potential conflicts and – finally – write this down in an agreement. Here, the parties can define their respective exploitation rights: Are they allowed to sell the invention? And if so: Can they even sell it to competitors? Who is allowed to use the invention? And does the active owner have to compensate the other co-owners? These are typical questions which arise during negotiations of R & D agreements. In most cases, they can be answered to the benefit of both parties in view of their respective market position and specific interests. A second group of cases are those in which the joint ownership occurs “unintentionally”. Be it among friends on the occasion of a different collaboration, be it that a part of the invention is stolen and then further developed.

In the past, an important example of this second group originated from the German Act of Employee Inventors. If the employer did not correctly transfer the invention from the inventor to the company, the inventor was still a co-owner, in many cases together with its employer – the origin of many disputes. Which cases do you like most, Jan?

I like the first group. When drafting the R & D contract, you create a small piece of law, you can weigh the different interests and literally bring the parties together. The second group, in contrast, can lead to awful conflicts. 

Let's use the “classical” example of the automotive industry: Imagine a car maker and their supplier having invented a new product which then turns out to be successful on the market. Questions arise: “Is the car maker entitled to source the new devices from other suppliers? And vice versa: Is the supplier entitled to sell the device which it invented itself to other car makers? Even these fundamental questions are not clearly solved in our existing law.

I always find it astonishing that these very simple questions are not easy to answer.

The reason is that our patent law is silent in that regard. It simply reverts us to general civil law which does not differentiate between sailing boats, apple trees, and patents. What is appropriate for apple trees and sailing boats may not be appropriate for patents.

Right. In 2005, the Federal Court of Justice issued a very important decision that answered at least some of these questions. If only one (first) co-owner is practicing the invention, the other (second) co-owner does not automatically receive a remuneration. So, the second owner must engage with the first owner and request a broad exploitation agreement. As part of such an agreement, one could define that the second co-owner is not even allowed to use the invention – but in turn receives a compensation.
In my understanding, this decision was received very well.

It was really a good decision. Unfortunately, it left many questions open and the disputes continued. For instance, it is still not clear if ...

IP Insights: What to bear in mind when making joint inventions

To dive even deeper into this issue, please [read our corresponding IP report: https://www.bardehle.com/en/ip-news-knowledge/ip-news/news-detail/g1-22-and-g2-22-happy-claimants-of-priorities-and-disappointed-opponents

Hello everyone, today my colleague, Niels Malkomes and I will discuss the recent landmark decision of the EPO’s Enlarged Board of Appeal – G1/22 and G2/22 – on Entitlement to Priority. Niels, the practical significance of this decision for patentees and applicants alike cannot be overestimated. It will significantly reduce the risk that patents are revoked for formal reasons. Can you tell us a bit more about the decision?

The decision is about the priority and the entitlement to priority. The priority right is the right of an applicant to have a better effective date so he can file a later application claiming the priority date of an earlier application, i.e.the effective date for the assessment of novelty and inventive step will be the better, earlier date of the priority application. The question whether a patent is valid or invalid very often hinges on the validity of the priority claim.

And under the EPC, the right to claim the priority of an earlier application rests with the applicant of that earlier application or with their successor in title. The decision will make it more difficult to challenge that the applicant of the later application is indeed the true successor in title.

The most common scenario which will be most familiar to US applicants, especially before the America Invents Act, is the following: First, a US application is filed designating the inventor as applicant, and subsequently, an international application is filed that designates the inventor as applicant for the United States only, and the inventor’s employer, or another legal entity, for all other countries.

In this situation the formal validity of the priority claim of the European patent that resulted from the international patent application was often challenged. It was contested that the priority right was actually validly transferred from the inventor – the applicant of the earlier application – to the applicant of the later application. As an opponent, I would not have had to provide any further evidence to support that allegation. I could simply say “Well, it would be up to the proprietor to prove that the priority right was actually validly transferred.”

Therefore, ideally, the proprietor would produce a written assignment of the priority claim dating back prior to the filing of the later application. However, in many cases in the past, the proprietor was unable to provide such an assignment so that many patents got revoked because of the invalidity of the priority claim: The effective date of the application was no longer the date of the priority application but the date of the later application which means that prior art could surface which challenged the novelty or the inventive step of the invention. 

With the present decision, the Enlarged Board of Appeal first addresses the question whether it is entitled at all to assess the validity of the priority claim – this is an important question because, for example, the entitlement to the application itself cannot be verified by the EPO, because this is subject to national law.

The Enlarged Board of Appeal decided that the entitlement to priority and the assignment of the application itself are two distinct issues, that the EPO is competent to assess the validity of the priority claim, and that said assessment is subject to the autonomous law of the EPO and not the national law. 

They also said that when an applicant claims the priority of an earlier application, there is – and this is, I think, the most important aspect of the decision –a “rebuttable presumption” that this claim is valid. So, without any further conditions attached, this is assumed. And then, the burden of proof is basically shifted to the Opponent to prove that the priority claim is indeed invalid.

IP Insights: Entitlement to priority - G1/22 and G2/22

To browse the latest decisions rendered by the UPC, please refer to our UPC decisions database: https://upc.law/.

Hi everyone, welcome to this IP Quick Tip relating to our first experiences at the UPC. It goes without saying that all of this is very exciting and still in its early stages. However, certain trends already seem to be robust. As of mid-October 2023, 84 cases have been filed and BARDEHLE PAGENBERG is representing plaintiffs and defendants alike in 21 of these cases, having an amazing market share of exactly 25%. 

Not only were we “first” in filing the initial cases on day 1, we also attended the very first procedural and substantive hearings at the Court of First Instance and the Court of Appeals. Indeed, we even won the very first inter-partes preliminary injunction based on the very first asserted Unitary Patent for our clients 10x Genomics and Harvard University with effect in all 17 member states. So, we do have relevant experiences to share. 

Most importantly, the UPC is functioning very well so far – in contrast to the electronic Case Management System – and delivers timely, high-quality decisions. 

In our cases, the international panel of judges including technically qualified judges was perfectly prepared and very engaged in the oral hearings. They presented their preliminary opinion in detail and gave clear guidance to the parties as to what to focus on in their oral arguments. In fact, all of the judges asked many questions, thereby drilling down right to the core of the technical questions at issue. They clearly “tested” the parties’ responses for their decision-making process. Given the technical expertise on the bench, this means that parties are well-advised not to provide evasive answers, but to explain their positions in an expedient and convincing way, and to avoid bogus arguments impairing credibility. 

As oral hearings are audio recorded, it is further advisable to diligently prepare and train for the oral arguments and to think on your feet. Using mock trials and US-style court reporters has proven to be helpful in that regard. 

Interestingly and contrary to some expectations, there are no judges dominating other judges on their “home turf”. The panels we experienced functioned like a sports team. One could tell that the judges really consider themselves a united team for a Unified Court and that they “think UPC” by not shying away from adapting or improving national and EPO case law as they see fit. These highly motivated best-in-class European patent judges will make the UPC a reliable and balanced center of gravity for resolving global patent disputes in a harmonized way. As a result, all good so far and exciting times ahead!

IP Quick Tip: First experiences at the UPC

For a deeper dive, read this article in GRUR Patent 2023, 167 (German): https://beck-online.beck.de/?vpath=bibdata%2Fzeits%2FGRURPATENT%2F2023%2Fcont%2FGRURPATENT%2e2023%2e167%2e1%2ehtm

Welcome to this IP Quick Tip on one the first decisions by the UPC, an ex parte preliminary injunction (PI) regarding speed-pedelecs.

On June 22, 2023, the Local Division of Duesseldorf granted a PI in favor of Swiss pedelec manufacturer myStromer based on patent infringement by their Swiss competitor Revolt Zycling at the “EUROBIKE” trade fair in Frankfurt. Earlier on that same day, myStromer had already sent a warning letter to Revolt Zycling and filed their application for provisional measures with the UPC.

The Court issued the PI without hearing the Defendant and even though Revolt Zycling had filed a protective letter with the UPC: According to the reasoning of the decision, the arguments in the protective letter had not convinced the Court.

Here are the three main take-aways from this decision:

First: The UPC may grant PIs very quickly, here in the course of one day, and without hearing the Defendant.

Second: Protective letters are still essential in preventing an ex parte PI – but they must be drafted carefully and comprise convincing arguments.

And third: The UPC will review validity, but a PI does not require a “battle-tested” patent – in the case at hand, it was sufficient that the patent had not been attacked since 2015 and that the Defendants had not raised any invalidity arguments.

IP Quick Tip: Preliminary injunctions at the UPC

If you are interested in a template for your invention disclosure report, please contect Dr. Patrick Heckeler: [https://www.bardehle.com/en/team/heckeler-patrick]

As you know, AI-related inventions are a specific sub-type of computer-implemented inventions. However, they are often much more complex. This is because AI inventions typically comprise lots of aspects, such as an underlying model or classifier, a training method, the use of a trained model, training data, and so forth. 

Hence, many more aspects have to be addressed and described in a corresponding invention disclosure report than in reports for common computer-implemented inventions so as to enable your patent attorney to draft a meaningful patent application.

First of all, be aware that AI is a rapidly developing technical domain. Hence, new buzzwords emerge frequently.

You should therefore make sure to explain the meaning of these terms in detail and to use them consistently throughout your invention disclosure report. 

Secondly, always clarify which aspects of your invention relate to the training phase and which relate to using a trained model. It might make sense to separate your invention disclosure report into corresponding chapters. Flow charts and UML diagrams are great tools for describing the operation of your invention.

Finally, I suggest including some sample training data with the invention disclosure report, supplemented by a brief description of the content. Ideally, you should also provide some measurement results to show how well your invention operates.

IP Quick Tip: Preparing an invention disclosure report for AI-related inventions

For a deep dive into the Unified Patent Court, please visit our UPC website https://www.bardehle.com/en/upc-special or our newly created UPC blog https://upc.law/.

As we all know, facts win cases. Thus, it is important that the UPC may order the inspection of premises and the preservation of evidence. This possibility also exists under German national law. 
Tobias, in what relevant aspects do German national inspection proceedings differ from UPC inspection proceedings?
A first and obvious difference is that UPC inspection proceedings allow for the possibility to collect evidence in all UPC member states, whereas German national inspection proceedings only allow for the collection of evidence in Germany. 
And one could think that a UPC inspection order, relating to potentially more than one member state, could take longer to obtain, right? But we have seen that the inspection orders issued by the UPC so far, namely by the Local Divisions in Brussels and in Milan, were issued in fast-track proceedings in light of upcoming exhibitions of the relevant products.
Yes, the order of the Brussels Local Division was issued within one day by the standing judge and the expert had to provide the expert report within seven days after the inspection took place. The court saw a need for a timely report since proceedings on the merits had to be brought within 31 days after the date specified in the inspection order.
That is interesting, because no such time limit exists under German national law to bring the main action after the inspection proceedings. So, this could be one possible explanation why inspection in German generally tends to take a little longer. Getting an inspection order can take up to a week and another 2-4 months can pass until you finally obtain the expert opinion. 
However, UPC inspection proceedings also come with disadvantages. For example, both the Milan and the Brussels Local Division chose the expert to conduct the inspection from the respective national lists of experts. In Germany, the applicant may freely choose the expert, although the expert must of course be a neutral person. 
A second disadvantage could be the requirements for obtaining an ex-parte inspection order. German courts basically always order the inspection without having heard the defendant beforehand, which renders inspection an efficient tool to surprise the defendant. While ex parte inspection id also an option at the UPC, it in the UPC’s discretion whether to grant the order ex-part or not. So, at least for the time being we cannot know whether, for example, not wanting to surprise the defendant would qualify as a sufficient reason for an ex parte inspection order at the UPC.
Last but not least, an important aspect for any applicant is costs. In Germany, costs for inspection proceedings are manageable and cases are often settled after the inspection before a main action is brought. The reason is: the expert opinion provides an indication of the infringement. Interestingly, in the decision of the Brussels Local Division, the decision on costs was expressly stayed until the main action.
The orders of the Milan Local Division didn’t contain an express decision on costs but they did address the duty of the applicant to provide security for the defendant’s legal costs and potential losses. Exceptionally, a security was not ordered, particularly because of the urgency of the inspection. 
While in both the UPC and national proceedings there is a duty to compensate for losses caused by the preservation of evidence, this claim is oftentimes useless because these measures typically do not cause any losses. 
Summing up: Whether the UPC or Germany is the better option for the preservation of evidence in your case, will depend on its particular circumstances, since both options come with advantages and disadvantages.

IP Insights: What is the best venue for the preservation of evidence

BARDEHLE PAGENBERG is one of the leading IP law firms in Europe which has pooled the strengths and competences of patent attorneys and attorneys-at-law for more than 40 years, clearly setting itself apart from many other IP law firms. 

The diverse client base appreciates the intense cooperation between attorneys-at-law – handling infringement cases before German civil courts through all instances on the one hand, and patent attorneys representing the client in proceedings before the Patent Offices and the Federal Patent Court on the other hand. We are also in a position to offer the invaluable input of our senior consultants who in their previous careers were leading German IP judges or members of the Boards of Appeal of the European Patent Office (EPO).

BARDEHLE PAGENBERG provides its clients with excellent services in all fields of Intellectual Property – from the first idea through to the launch, exploitation, enforcement and strategic management, particularly in the legal areas of patent law, trademark and design law, unfair competition law, antitrust law as well as licensing and technology transfer. To ensure processes of the highest standard, BAREDEHLE PAGENBERG operates according to a quality management system compliant with ISO 9001 and regularly submits itself to audits for recertification purposes. 

The full-service IP firm is regularly chosen by global companies which value its international availability and diverse team. Additionally, various German blue-chip companies and small and medium sized businesses, market leaders in niche technologies, entrust BARDEHLE PAGENBERG with their IP business.

IP Quick Tip:Injunctive relief in infringement proceedings before the UPC

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