Case study:
Cosmetics – patent and utility model

Initial situation

Our client developed a new cosmetic product that turned out to be a great market success in some of the most important markets outside Europe. In view of this success, a competitor launched a similar product on the European market at a time when our client did not yet have a granted European patent, but did have four pending European patent applications. The client nevertheless wanted to take action against its competitor. It was decided to branch a German utility model off of one of the pending European patent applications and sue the competitor for utility model infringement.

Action taken

To deal with this, HOFFMANN EITLE composed a team of patent attorneys specialized in this specific chemical field and attorneys at law. This team successfully handled not only the infringement proceedings before the German court, but also the parallel utility model invalidation proceedings before the German Patent and Trademark Office. The team was also successful in defeating the oppositions filed against two of the EP patents in the first instance. The team further advised the client in settlement negotiations and with regard to a license contract.

Outcome

As soon as the infringement suit was filed, the competitor asked for and was granted a license under our client’s technology. Moreover, all four European applications proceeded to grant, despite numerous third-party observations. In one of the cases, an appeal against the Examining Division’s decision to reject the application was successful. The client was thus able to obtain and maintain a dominant patent position regarding the technology relating to its new cosmetic product.