HOFFMANN EITLE Quarterly Newsletter 03/25
Veröffentlichung | 19.03.2025
Dear Colleagues and Friends,
We are excited to present the first issue of the Hoffmann Eitle Quarterly of 2025, highlighting key developments shaping European IP law. In our first article, we offer insight into the first oral examination of expert witnesses at the UPC, where Hoffmann Eitle played an active role. The second article explores the strategic considerations of whether to keep an invention secret or apply for a patent. Our third article provides an in-depth analysis of recent changes in EU design law. We then highlight Hoffmann Eitle’s significant contributions to the development of European case law in 2024. In the fifth article, we report on a remarkable recent decision by the German Federal Court of Justice, which upheld the priority claimed in a patent application despite an amended description. The sixth article discusses a referral to the Enlarged Board of Appeal of the EPO regarding the status of the intervener in opposition appeal proceedings and its practical implications. Finally, we analyze the CJEU’s recent landmark decision in BSH v Electrolux, which may open up new avenues for cross-border litigation in Europe. As always, we hope you will find this issue of the Hoffmann Eitle Quarterly informative and we welcome your feedback.
Nicolas Douxchamps
Editor-in-chief of the Hoffmann Eitle Quarterly
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & Digital Technologies Practice Group
Hoffmann Eitle Quarterly
Making the Fictional Skilled Person Real: The First Oral Examination of Expert Witnesses at the UPC
Patent disputes often hinge on the "skilled person," a fictional representation of someone working in the relevant technical field. While most European courts typically rely on documentary evidence, some courts use expert witness testimony to bring this figure to life. The Unified Patent Court allows for both. A recent case before the Nordic-Baltic regional division saw the first oral examination of expert witnesses, suggesting this division may be receptive to such testimony in complex technical disputes.
Shall It Be Kept Secret? Strategic IP Considerations
Companies must often decide between filing a patent application or keeping the invention secret. This article aims to provide an overview of what trade secrets are, their usefulness vis-à-vis patents for the protection of commercially relevant assets and how to use them as a defense in infringement proceedings.
The New Face of EU Designs
The Directive (EU) 2024/2823 of the European Parliament and of the Council of October 23, 2024, on the legal protection of designs (recast) ("Recast Directive") and the Regulation (EU) 2024/2822 of the European Parliament and of the Council of October 23, 2024, amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002 ("Amended Regulation") come into force this year.
Hoffmann Eitle's Significant Contributions to the Development of European Case Law in 2024
Attorneys at Hoffmann Eitle work at the cutting edge of European intellectual property law. Our advocacy for our clients resulted in many interesting case law developments in 2024. In the following, we outline some of these.
On Thin Ice: Adding an Embodiment and Saving the Priority
According to a recent decision of the German Federal Court of Justice, the priority of an earlier application can be validly claimed even if the subsequent application comprises an additional exemplifying embodiment in which individual terms have a different meaning than in the patent claim, but which also falls within the scope of the claim according to the original interpretation of the terms. This is also the case if the additional embodiment comprises further functions not featured by the patent claim and not disclosed in the earlier application.
Intervention During EPO Appeal Proceedings: G 3/04 Called Into Question
Board of Appeal 3.2.04 referred questions to the EPO's Enlarged Board of Appeal concerning the status of the intervener in opposition appeal proceedings. The case, now known as G2/24, has significant practical implications for the conduct of litigation based on European patents.
BSH v Electrolux - The Gateway to a New Age of Cross-Border Litigation?
Forum shopping has been ubiquitous in the world of patent litigation, long before the Unified Patent Court established itself as a one-stop-shop venue covering more than half of the EU’s Member states.
Euro Law Conference and Training Course 2025
Join us for an unmissable opportunity to deepen your expertise in European patent law! This summer, HOFFMANN EITLE warmly invites industrial property practitioners from around the world to attend two complementary events at our Conference Centre in Munich:
Please note that we offer a reduced rate for in-house/general counsel attendees and that we also offer an early-bird discount until March 31, 2025. Early booking is highly appreciated to ensure adequate space and no later than May 2, 2025.
We look forward to welcoming you to Munich for an engaging and insightful event!
With best regards,
HOFFMANN EITLE