HOFFMANN EITLE Quarterly Newsletter 6/23
Publications | 23.06.2023
Dear Colleagues and Friends,
In this issue of the Hoffmann Eitle Quarterly, we first look at how computer-implemented inventions in the field of mechanical engineering and applied physics can be patented, illustrating this with concrete examples. The second article then addresses the fascinating topic of quantum computing and how to patent this technology at both the EPO and the USPTO. Special thanks go to Sarah C. Schlotter from Wolf Greenfield for co-authoring this article and for providing the US perspective on this topic. We then take a look at a recent decision of the European Court of Justice on the potential liability of the operator of an online market platform for trademark infringement by offering third-party goods on that platform. In the fourth article, we discuss the Enlarged Board of Appeal's recent, long-awaited decision G 2/21, addressing circumstances under which post-published data may be used to support a technical effect relied on for inventive step at the EPO. Finally, the last article relates to the admissible timing for filing German nullity actions and UPC revocation actions. We hope that you will find this issue of the Hoffmann Eitle Quarterly informative, and, as always, feedback is greatly appreciated.
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
Patenting Computer-Implemented Inventions in the Mechanical Field is (Almost) Easy
In this article, we look at how computer-implemented inventions in the field of mechanical engineering and applied physics can be patented. We provide case studies and give examples of how computer-related aspects can be key features to support the existence of an inventive step, although these features may by themselves be considered non-technical.
Patenting Quantum Computing Technologies in Europe and the U.S.
Quantum technologies, and quantum computing in particular, are not only setting new technical frontiers but also new legal frontiers when it comes to patenting these technologies. We look at the challenges of these new frontiers at the EPO and the USPTO and what can help to address them.
Louboutin Shoes: Amazon's Responsibility for Third-Party Offers
The European Court of Justice has decided on questions referred to it by national Courts concerning the interpretation of Article 9(2) EUTMR, namely whether the operator of an online market platform can itself be regarded as using a trade mark, even when only third-party sellers offer goods bearing that trade mark on that platform.
G 2/21: The End of "Plausibility"?
The referral G 2/21 to the EPO's Enlarged Board of Appeal (EBoA) sought to clarify if and under what circumstances post-published data can be used to prove a technical effect relied upon for inventive step. In particular, it was asked whether it is required that the technical effect is at least plausible, or at least not implausible, from the application as originally filed.
In its decision G 2/21, the EBoA now seems to reject the concept of plausibility for inventive step and instead introduces a new test for technical effects, which entails challenges and opportunities for Patentees and Opponents.
When Can a German Nullity Action Be Brought During Pending Opposition?
The Federal Court of Justice clarified that a German nullity action is admissible after a final decision on the claim scope in EPO opposition proceedings. It is not necessary to wait for the formal conclusion of the EPO opposition proceedings, which could be years later. The article also discusses whether UPC revocation actions are admissible if filed before grant of the patent.
Should you have any questions or need more information, please do not hesitate to contact us.
With best regards,
HOFFMANN EITLE