HOFFMANN EITLE Quarterly Newsletter 09/24
Publications | 18.09.2024
Dear Colleagues and Friends,
In this latest edition of the Hoffmann Eitle Quarterly, we begin with four articles focusing on the Unified Patent Court (UPC). Our first article explores the frequency of patent amendments in UPC revocation actions, highlighting the importance of a strategic approach for patentees in such cases. In the second, we provide insights from two Hoffmann Eitle partners on their hands-on experience during the first main action hearing before the UPC Paris Local Division (LD). We then share six key lessons from the UPC's first revocation decision, covering topics such as claim interpretation, priority, and inventive step, while comparing the UPC's stance with that of the European Patent Office (EPO). In the fourth article, we examine a remarkable decision of the Hamburg LD, which rejected a request for provisional injunction, although it did not find the asserted patent invalid. Shifting focus to the EPO, our next article discusses a pending referral to the Enlarged Board of Appeal regarding the extent to which the description shall be used to interpret claims. In the following article, we look at inconsistencies that have emerged in the way the EPO Boards of Appeal apply their Rules of Procedure when it comes to the admissibility of amendments to a party's case. Lastly, we report on a decision by the UK Court of Appeal overturning a landmark High Court judgment on artificial neural networks, a topic we previously covered in the Quarterly. 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
Subsequent Request For Patent Amendment as a Defence in UPC Revocation Actions
At the Front-Line of Europe's New Patent Court: the First Hearing of a Main Action at the UPC Paris LD
The UPC has been held out as making patent litigation in Europe more accessible, more consistent, and more effective for both domestic and international parties.
The UPC Takes an EPO-Inspired but Independent Approach on Validity
The first revocation decision by the UPC came out at around the same time as the first main infringement decisions by its Local Divisions (LD) in Dusseldorf and Paris which also decided on validity.
Hamburg LD on UPC PI Proceedings: The EPO's View Matters
So far, about half of the UPC provisional injunction (PI) requests were rejected, most of them for lack of certainty of the validity of the asserted patent.
Shall I Stay or Shall I Go - How to Interpret Claims Before the EPO
The EPO case law on claim interpretation is somewhat divergent. Whilst in some cases, it is required to refer to the description and the drawings at least in some circumstances, according to a different line of jurisprudence the claims are to be understood by themselves. In this article, we review this case law as well as a currently pending referral to the Enlarged Board of Appeal to clarify this divergence.
Inconsistencies in the Application of the EPO Rules of Procedure of the Boards of Appeal Concerning Case Amendments
The EPO Boards of Appeal routinely apply their Rules of Procedure to hold elements of appeal cases inadmissible. In doing so, they sometimes come to inconsistent conclusions, or apply different principles, leading to a lack of legal certainty.
Emotional AI Is Nothing to Get Excited About, Rules UK Court of Appeal
The British Court of Appeal has overturned a surprising judgment of the British High Court ruling artificial neural networks, and their use in general, as being outside the "computer program" statutory exclusion.
Should you have any questions or need more information, please do not hesitate to contact us.
With best regards,
HOFFMANN EITLE