HOFFMANN EITLE Quarterly Newsletter 9/22

Veröffentlichung | 23.09.2022

Dear Colleagues and Friends,

In this issue of the Hoffmann Eitle Quarterly, we continue with our series of articles addressing patenting computer-implemented inventions (CII) and artificial intelligence (AI) at the EPO, with an article on the sufficiency of disclosure requirement for these inventions. This issue further includes a report on recent developments in Dutch law regarding cross-border effects of injunctions issued by Dutch courts even when there is no local patent infringement. This is followed by a discussion of a recent and interesting dispute in Germany concerning the "Spezi" trademark. We then turn to the issue of prohibition of double patent protection in Germany in connection with the forthcoming entry into force of the Unified Patent Court Agreement (UPCA). The fifth article examines an expected referral to the EPO's Enlarged Board of Appeal relating to the aspect of public availability of products within the meaning of Art. 54(2) EPC. We conclude with an update to adapting the description to amended claims at the EPO.

We very much hope that you will enjoy this issue of the Hoffmann Eitle Quarterly, and, as usual, we welcome your comments. By the way, we now have a web page dedicated to the Hoffmann Eitle Quarterly, which can be accessed here.

Nicolas Douxchamps
Editor-in-chief of the Hoffmann Eitle Quarterly
Ir. (Electrical Engineering)
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & IT Practice Group


Driven by Technology: Patenting AI Before the European Patent Office (Part II)

In this second article of our series on artificial intelligence (AI) inventions (see the first here), we deal with sufficiency of disclosure. After summarizing the European Patent Office's (EPO) general requirements in this regard, we look at certain decisions of its Boards of Appeal and examine what they teach in relation to AI inventions' input data, engine, and output data. We conclude by identifying what should be included in a patent application to comply with the EPO requirements for sufficiency of disclosure.

Link to the article

Cross-Border Effects From Dutch Courts Without Local Patent Infringement

The case LONGi (Netherlands) Trading B.V. vs Hanwha Solutions Corp. has raised eyebrows on the ease with which the Dutch court provided an injunction for preventing patent infringement outside the Dutch borders. Although in the appeal the injunction was based on patent infringement, in the first instance the provisions judge based the injunction on a general tort. This possibility may open new avenues for patent holders to fight infringement.

Link to the article

The History and Entanglement of the "Spezi" Trademark; What did Riegele and Paulaner Agree Back Then?

In Germany and specifically in Bavaria, a non-alcoholic mix drink with the ingredients Cola and Orange soda has reached cult status and may be recognized as one of the most popular non-alcoholic drinks. Among consumers this Cola and Orange mix drink is well-known as "Spezi".

Link to the article

The German Patent Double Protection Prohibition and the UPCA: New Aspects to Consider

Historically, a European patent and its German counterpart could legally not co-exist in view of the German double protection prohibition. Because of this prohibition, the related German patent loses part or all of its legal effectiveness and thus its enforceability. Recent legal revisions, in light of the Unified Patent Court Agreement (UPCA), have created a new scenario: the double protection prohibition will not apply to: 1) European patents with unitary effect and 2) European patents which have not been opted out.

Link to the article

When Are Products "Available to the Public" in the Sense of Art. 54(2) EPC?

Following Enlarged Board of Appeal (EBoA) opinion G 1/92, the EPO's Boards of Appeal have adopted different interpretations of the criteria that need to be satisfied for a product to be made available to the public in the sense of Art. 54(2) EPC. A referral to the Enlarged Board of Appeal may provide clarity.

Link to the article

Amendment of the Description before the EPO: An Update

In the March 2022 issue of the Hoffmann Eitle Quarterly, we discussed a recent EPO Appeal Board decision that questioned the legal basis in the EPC for requiring adaptation of the description of a European patent application to the amended claims. The decision sparked hope that the EPO's currently strict insistence on extensive adaptations would be eased. In the meantime, new case law has emerged from the EPO Boards of Appeal, some of which supports the original decision and some of which calls it into question. The EPO also recently commented on the issue of adapting the description.

Link to the article

Should you have any questions or need more information, please do not hesitate to contact us.

With best regards,