HOFFMANN EITLE Quarterly Newsletter 12/24
간행물 | 16.12.2024
Dear Colleagues and Friends,
In this issue of the Hoffmann Eitle Quarterly, we cover a range of compelling topics. Our first article explores the complexities of inventorship for AI-assisted/generated inventions in the US and Europe. We then look at a recent, noteworthy decision by an EPO Board of Appeal, which concluded that generating new data from previously obtained measurements cannot contribute to inventive step. This is followed by a report on another decision, issued by the EPO's Legal Board of Appeal, which, contrary to previous case law, suggests that a divisional application may be filed with the EPO after grant under certain circumstances. In our fourth article, we analyse the UPC's first-ever decision on infringement under the doctrine of equivalents. Lastly, we examine a European Commission ruling on alleged abuse of a dominant position, focusing on the strategic use of divisional applications, or the so-called “divisionals game.” 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
Inventorship for AI-Assisted or AI-Generated Inventions in Europe and the U.S.
By now, it is impossible to imagine the patent world without artificial intelligence (AI). At the same time, there is uncertainty for companies and inventors as to how AI inventions should be handled. For example, when is a human contribution sufficient to rise to the level of inventorship, or when is it necessary to designate the AI as inventor? Is it even possible for AI to be the inventor? What happens if the wrong inventor is designated? In the U.S, there is a danger that incorrectly listing inventorship on a U.S. application will render the patent invalid. This article is intended to help shed some light on inventorship for AI-assisted/generated inventions in the U.S. and Europe.
Is Obtaining New Data From Measured Data Inventive? The Board in T 1741/22 Says Likely No
An application for analyzing glucose levels in a bodily fluid included a novel aspect of generating and displaying new data from already obtained measurements. These features were found not to contribute to any technical effect, and thus disregarded for inventive step. According to the decision, obtaining a maximum or minimum value by evaluating or interpreting measured values amounts to a cognitive or a mathematical exercise that is inherently non-technical. This remarkable decision may be useful for opponents to raise inventive step attacks, and highlights diverging opinions within the EPO, in particular with the earlier decision T 2681/16 on whether providing “an overall measure of the glucose variability and a prediction of glycemic events” is a technical effect.
J 1/24: Filing a Divisional After Grant at the EPO
It has long been established that divisional applications can still be filed following an appeal by the applicant against a decision to refuse an application. This is the case regardless of the outcome of the appeal in the parent case. J 1/24 proposes that, in contrast to previous case law, the same might also be true after the publication of the decision to grant a European patent. That is, applicants might still be able to file divisional applications post grant after having filed an appeal against the decision to grant, irrespective of the fate of the appeal.
DOE at the UPC
n the first decision on an infringement under the doctrine of equivalents, the Dutch local division of the UPC has developed and applied four questions to test for equivalent infringement. We conclude that the way the local division has derived its test may well be challenged as being inappropriate under the UPC.
EU Competition Law: Teva Fined €462.6 Million for “Playing the Divisionals Game” and Disparagement Campaign
The European Commission has fined Teva €462.6 million for abusing its dominant position to delay competition to its blockbuster medicine Copaxone. The Commission found that Teva artificially extended the patent protection of Copaxone and systematically spread misleading information about a competing product to hinder its market entry and uptake.
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With best regards,
HOFFMANN EITLE