1. Infringement Based on the Doctrine of Equivalence at the UPC
On November 22, 2024, the UPC’s Local Division in The Hague ruled on European Patent EP2137782, owned by Plant-e Knowledge B.V. The court found that the defendant’s devices, while not literally infringing, did so under the doctrine of equivalence. The court applied a four-step test to determine equivalence, assessing technical equivalence, fair protection for the patentee, reasonable legal certainty for third parties, and the novelty and inventiveness of the allegedly infringing product over prior art. This approach aligns closely with German and Dutch practice, indicating a harmonized application of the doctrine across jurisdictions.
2. The Court of Appeal Unlocks the Door for Patents Previously Excluded by the Helsinki Division
On November 12, 2024, the UPC’s Court of Appeal clarified the application of Article 83 of the UPC Agreement (UPCA). The case involved the withdrawal of an opt-out for a patent during the UPC’s transitional period. The Court of Appeal determined that the term ‘action’ in Article 83 UPCA includes all actions within the UPC’s jurisdiction, not just infringement and revocation actions. Importantly, the court specified that only actions initiated during the transitional period restrict the withdrawal of an opt-out, thereby allowing certain patents to fall under the UPC’s competence despite prior national proceedings.
3. The Central Division Paris – Review of All Granted Claims if Attacked and if Potential Claim Amendments Are Not Allowed
On November 5, 2024, the Central Division of the UPC in Paris addressed European Patent EP 3 498 115 B1. The court emphasized its authority under Article 65(3) UPCA to limit or partially revoke patents independently of amendment applications by the patent owner. It underscored that litigation is directed by the parties’ requests, which shape the court’s review process. The court is required to examine each granted claim individually if challenged, aligning with the standard practice of the German Federal Patent Court. Additionally, the court reiterated that claim interpretation is a question of law that it can address at any stage of the proceedings.
4. The Local Division Düsseldorf – Importance of the “Characterized in That” Clause
In a decision concerning European Patent EP 1 793 917, the Local Division Düsseldorf provided insights into patent claim interpretation. The court highlighted that the scope of a patent claim should not be strictly limited to specific embodiments depicted in the patent drawings. Instead, claims should be interpreted based on the understanding of a skilled person, considering the entire patent description and drawings. The court also noted that prior art should not unduly constrain claim interpretation unless the patent itself makes specific distinctions from the prior art. Furthermore, the court discussed publication rights, stating that publishing a decision should be reserved for instances where other legal measures do not sufficiently protect the claimant.
Chapter 1: Timing of Auxiliary Requests in Munich
The Munich Central Division found that auxiliary requests submitted after the closure of written proceedings are too late, even if presented as an immediate reaction to a finding of the Court of Appeal in a parallel case. Further, the Central Division clarified that international jurisdiction must always be examined by the court not withstanding whether or not the parties raise this issue timely. Last, the Central Division did not stay the revocation action despite of a quite matured German revocation proceedings.
Chapter 2: Group Defence in Düsseldorf
The Local Division Düsseldorf addressed how multiple defendants can independently manage their defence in patent infringement cases. On the downside: If a defence strategy of any defendant includes that the patent being allegedly infringed is invalid, such defendant is required to file a counterclaim for the patent’s annulment. On the plus side: The co-defendants may jointly file such revocation action.
Chapter 3: The Court of Appeal – Understanding “Frontloaded” Procedures
The CoA clarified that the idea of front-loaded proceedings, which aims to have parties present comprehensive cases from the start, does not preclude them from further developing their arguments or submitting additional evidence as the proceedings evolve. As a general rule, the Court of Appeal does not issue cost orders in branched-off proceedings that do not conclude the action. Instead, the costs are assessed at the end of the main proceedings, considering the overall outcome and the parties’ success or failure, as per Article 69 of the UPCA.
Chapter 4: Interim Measures by the Court of Appeal
The CoA found the subject matter of claims 1 and 13 inventive, underscoring the lack of “incentive/motivation” in the prior art. The Court exercised discretion in admitting new arguments regarding the prior art that were not accepted in the first-instance proceedings due to their late submission. As a general rule, submissions after the conclusion of oral hearings are not considered in the court’s decision-making process. Also as a general rule, the timeframe for requesting a Preliminary Injunction starts when the claimant becomes aware or should have been aware of the infringement. Last, the CoA clarified that irreversible damage is not necessary for granting preliminary injunctions, focusing instead on the balance of interests between the patent holder and the alleged infringer.
Press Release, May 16, 2023
Europe is preparing for the Unified Patent Court (UPC): When it starts work on 1 June, it will further unite the member states participating in the UPC system through compliant rules and help to reduce barriers to trade in the European Union. This form of cohesion and desire for international cooperation is reflected in the European Patent Litigators Network (EPLN), which the two IP law firms Meissner Bolte (Germany) and Santarelli Group (France) founded in February. With the renowned sister firms SIB (Società Italiana Brevetti) and SIB LEX società tra avvocati from Italy, two more strong partners have now joined the network. Together, the four law firms will now line up for their cases before the UPC.
“The EPLN bundles the expertise of internationally important IP law firms from the most important EU states with regard to the filing, protection and enforcement of patents,” says Kay Rupprecht, Partner of Meissner Bolte and Director of Meissner Bolte (UK) Ltd. “We are very pleased to be able to inspire SIB and SIB LEX to join our network and thus to have two outstanding Italian law firms at our side. In addition, with the “Descrizione”, Italy has long-established inspection and evidence preservation tools in its legal system, which offer the EPLN exciting opportunities for action through the cooperation with SIB and SIB LEX. They will optimally complement the French inspection and evidence procedure “Saisie Contrefaçon” as well as the almost identical UPC procedures.”
SIB LEX has offices in Rome and Milan and can rely on partners with more than 30 years of experience. In addition to Rome and Milan, SIB is also represented in Florence and Verona. The two firms’ team of more than 45 patent attorneys and lawyers advises on all aspects of Intellectual Property, focusing in particular on complex pan-European litigation relating to patents, also standard essential and utility models. SIB and SIB LEX partners have been awarded in the recent years as Litigation and Prosecution IP Stars.
“We have worked with both Meissner Bolte and Santarelli Group in the past. In doing so, we have found that we all share the same professionalism and expertise at the highest level and are therefore an excellent fit. The EPLN will provide clients with country-specific expertise, resources and tailored solutions across national borders. With this partnership, we strengthen our lawyers’ position before the UPC and thus also the position of our clients,” says Jacopo De Benedetti, Managing Partner at SIB.
The EPLN makes it possible to advise and represent the clients of the respective law firms in cases before the UPC even more comprehensively and at the same time more cost-efficiently. The international orientation ensures that the lawyers have a wide range of remedies at their disposal to achieve the best results for their clients.
“With our network, we focus on quality and the experience of the individual members in cases within their country. We will support each other in different areas, including collecting and securing evidence, conducting investigations, obtaining proof of purchase or organising seizures. In doing so, we can also learn more about the procedures in the other countries and thus each law firm can generate even more added value for itself,” says Christophe Cornuejols, Managing Partner of the Santarelli Group.
As we wait for the UPC, that begins operations on 1st June, to start issuing decisions on infringement and validity of unitary and European patents for all 17 initially participating states of the European Union, the EPLN is to grow once again. Talks about another international partner are already under way.
Further information can be found at https://epln.com/.
Press contacts:
Meissner Bolte
GCI Germany
Philipp Schnorbus
M: +49.173.731.0373
[email protected]
www.gcigermany.com
Santarelli Group
[email protected]
Marie-Odile Gay // Matthieu Alhuraish
M : +33.6.63.79.70.72
M : +33.6.71.67.81.65
SIB & SIB LEX
Laura Ercoli
[email protected]
[email protected]
P: +39 06 695441
About Meissner Bolte
Meissner Bolte is a full-service IP law firm offering prosecution and litigation of patents, trademarks and designs. With eleven offices in Germany and one in the United Kingdom, our team of more than 60 patent attorneys and 20 attorneys-at-law and a total of 320 employees advises our clients from various industries. We process more than 2,000 patent applications per year and are one of the leading representatives for trademarks and designs at the EUIPO. With 50 percent domestic and 50 percent international clients, we are the largest IP law firm in Germany for national clients. Our expertise covers all industries with a focus on the automotive and medical technology sectors as well as specialist departments for computer-implemented inventions and chemistry and life science.
About Santarelli Group
Resulting from several mergers of firms since 1852, notably the merger of three French firms (Ipside Santarelli and Brevalex) in 2021, Santarelli Group is one of the leading French IP firms providing services from prosecution to litigation, in patents, trademarks and designs. Located in 18 offices in France and China, our 110 French and European Patent and Trademark attorneys and our 7 attorneys-at-law assist our clients in numerous technological fields and provide tailor-made support, on the technical, legal and strategic aspects. We process approximately 1500 new patent filings per year, with one of the highest delivery rates. Our trademark department is proud to manage worldwide trademark portfolios of the major players in several industries such as luxury, hotel, leisure. They deal with over 2000 oppositions per year.
About SIB and SIB LEX
SIB is an internationally recognised intellectual property firm specialising in the protection and enforcement of patents, trademarks, models, designs and copyrights. We aim to help clients manage their intellectual property rights according to their business priorities, extracting the maximum value from investments in creativity, innovation and trademarks. Our professional staff includes qualified Italian and European patent attorneys/European patent litigators with specialisations in all main technical areas, as well as qualified trademark attorneys and intellectual property law experts. Our clients include enterprises of all sizes, from start-up to corporate, as well as universities/research centres and foreign associates.
SIB LEX is a law firm focused on intellectual property in all its aspects, and specifically in assisting clients in complex pan-European patent disputes, including standard essential patents. We serve a clientele of Italian and multinational companies, small and medium-sized enterprises, and large enterprises operating in highly specialized sectors or related to products or services for mass consumption, fashion, design, electronics, mechanics, pharmaceuticals, biotech, and others.