HOFFMANN EITLE Quarterly Newsletter 9/23
Publication | 22.09.2023
Dear Colleagues and Friends,
In this issue of the Hoffmann Eitle Quarterly, we begin a series of articles on a new package of draft EU regulations, with a first article on a draft regulation on standard essential patents and a second on a forthcoming major reform of supplementary protection certificates (SPC) in Europe. Our third article delves into a decision of the Higher Regional Court (HRC) Dusseldorf on whether a slogan can be considered a trademark if it merely describes the obvious. Next, we report on an important new referral to the Enlarged Board of Appeal (EBoA) of the EPO concerning whether and to what extent a product constitutes prior art under the EPC. The fifth article discusses a possible referral to the EBoA on the need to adapt the description when claims are amended at the EPO. We then examine a remarkable recent decision of a Board of Appeal limiting the possibility of correcting mistakes in documents filed with the EPO. This is followed by an article taking a critical look at proposed amendments to the EPO's Rules of Procedure of the Boards of Appeal, which in our view should not be adopted in full. The final article of this issue discusses a recent decision of the HRC Dusseldorf which shows that German infringement courts may disregard validity assessments by patent offices when deciding whether to grant preliminary injunctions. We hope that you will find this issue of the Hoffmann Eitle Quarterly informative and, as always, your feedback is very welcome.
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
HOFFMANN EITLE Quarterly
New EU Legislation Proposals (Part I): A First Look at the Draft SEP Regulation
The European Commission published a package of draft regulations concerning patents on 27 April 2023. The package includes support for licencing of standard essential patents (SEP), supplementary protection certificates (SPCs), and compulsory licensing of patents. In the first of a series of articles on this legislative package, we focus on SEPs.
New EU Legislation Proposals (Part II): Creation of a New SPC Landscape for Europe
The European Commission is planning a sweeping reform of supplementary protection certificates (SPC), instruments by which the patent protection of pharmaceutical and plant protection products can be extended by up to 5 ½ years. In late April 2023, it outlined a new SPC landscape in four proposed regulations.
"Eieiei": Stating the Obvious Is Not a Trademark Infringement
Is a slogan a trademark if it describes the obvious? The Higher Regional Court (HRC) Dusseldorf considered this question in a case between two German eggnog manufacturers - and came to a clear decision.
Referral G 1/23: The Public Availability of Products in a New Light
As foreshadowed last year in the HOFFMANN EITLE Quarterly, EPO Board of Appeal 3.3.03 in decision T 438/19 has referred three questions to the Enlarged Board of Appeal (now handled as G 1/23 "Solar Cell") to resolve a perceived divergence in the case law. The referral concerns whether and to what extent a product and technical information partly describing it constitute prior art under Art. 54(2) EPC.
Amendment of the Description Before the EPO: Possible Referral to the Enlarged Board of Appeal
The debate over amendments to the description at the EPO might be about to go into the next round in view of a potential referral to the Enlarged Board of Appeal. The current case law is divided on the topic of whether the description must be brought into strict conformity with the claims and whether embodiments falling outside the scope of the claims must be deleted or labelled as such. A decision by the Enlarged Board of Appeal could bring some long-awaited clarity on the issue.
T 695/18: To Err is Humane; to Forgive, Divine
Under Rule 139 EPC, mistakes in documents filed with the EPO may be corrected upon request. A recent Board of Appeal decision, T 695/18, has limited the scope of application of this rule as far as procedural statements which immediately terminate proceedings are concerned. In this article, we review this decision and its consequences.
Proposed Amendments to the EPO Rules of Procedure of the Boards of Appeal: A Critical Analysis
The EPO has proposed new amendments to the Rules of Procedure of the Boards of Appeal (RPBA) to support more ambitious timeliness objectives. Some of these amendments are unlikely to shorten appeal proceedings, will reduce the quality of decisions, and are unfair on Respondents. In our view, they should not be adopted in full.
In Provisional Injunction Proceedings, German Courts Can Disregard an EPO Board of Appeal's Opinion
In a well-reasoned decision, the Higher Regional Court (HRC) Dusseldorf has lifted a provisional injunction (PI) on the basis that the asserted patent is likely to be invalid although the EPO's Technical Board of Appeal (TBA) had previously found the claims to be valid in examination proceedings. The decision provides clarity as to when German infringement courts can and should disregard validity decisions from patent offices or the German Federal Patent Court.
Should you have any questions or need more information, please do not hesitate to contact us.
With best regards,
HOFFMANN EITLE