Shows
BARDEHLE IP ExpertsIP Insights: What ist the best venue for the preservation of evidence
For a deep dive into the Unified Patent Court, please visit our UPC website https://www.bardehle.com/en/upc-special or our newly created UPC blog https://upc.law/.
As we all know, facts win cases. Thus, it is important that the UPC may order the inspection of premises and the preservation of evidence. This possibility also exists under German national law.
Tobias, in what relevant aspects do German national inspection proceedings differ from UPC inspection proceedings?
A first and obvious difference is that UPC inspection proceedings allow for the possibility to collect evidence in all UPC...
2024-04-0304 min
BARDEHLE IP ExpertsIP Quick Tip: Invention disclosure report for AI-related inventions
If you are interested in a template for your invention disclosure report, please contect Dr. Patrick Heckeler: [https://www.bardehle.com/en/team/heckeler-patrick]
As you know, AI-related inventions are a specific sub-type of computer-implemented inventions. However, they are often much more complex. This is because AI inventions typically comprise lots of aspects, such as an underlying model or classifier, a training method, the use of a trained model, training data, and so forth.
Hence, many more aspects have to be addressed and described in a corresponding invention disclosure report than in reports for common...
2024-02-2101 min
BARDEHLE IP ExpertsIP Quick Tip: Preliminary injunctions at the UPC
For a deeper dive, read this article in GRUR Patent 2023, 167 (German): https://beck-online.beck.de/?vpath=bibdata%2Fzeits%2FGRURPATENT%2F2023%2Fcont%2FGRURPATENT%2e2023%2e167%2e1%2ehtm
Welcome to this IP Quick Tip on one the first decisions by the UPC, an ex parte preliminary injunction (PI) regarding speed-pedelecs.
On June 22, 2023, the Local Division of Duesseldorf granted a PI in favor of Swiss pedelec manufacturer myStromer based on patent infringement by their Swiss competitor Revolt Zycling at the “EUROBIKE” trade fair in Frankfurt. Earlier on that same day, myStromer had already sent a warning letter to Revo...
2024-01-2402 min
BARDEHLE IP ExpertsIP Quick Tip: First experiences at the UPC
To browse the latest decisions rendered by the UPC, please refer to our UPC decisions database.
Hi everyone, welcome to this IP Quick Tip relating to our first experiences at the UPC. It goes without saying that all of this is very exciting and still in its early stages. However, certain trends already seem to be robust. As of mid-October 2023, 84 cases have been filed and BARDEHLE PAGENBERG is representing plaintiffs and defendants alike in 21 of these cases, having an amazing market share of exactly 25%.
Not only were we “first” in filing the initial cases on day...
2024-01-1003 min
BARDEHLE IP ExpertsIP Insights: Entitlement to priority - G1/22 and G2/22
To dive even deeper into this issue, please read our corresponding IP report.
Hello everyone, today my colleague, Niels Malkomes and I will discuss the recent landmark decision of the EPO’s Enlarged Board of Appeal – G1/22 and G2/22 – on Entitlement to Priority. Niels, the practical significance of this decision for patentees and applicants alike cannot be overestimated. It will significantly reduce the risk that patents are revoked for formal reasons. Can you tell us a bit more about the decision?
The decision is about the priority and the entitlement to priority. The priority right is the...
2023-12-0607 min
BARDEHLE IP ExpertsIP Quick Tip: How to maximize the scope of a European CII application
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It is a common scenario that a European patent application claims priority of an application that was first been filed in the Unites States.
Often, however, the U.S. priority application does not contain the disclosure necessary to achieve the broadest possible scope in European patent applications.
So, keep these two tips in mind when drafting a U.S. application that might later be prosecuted in Europe:
First: In contrast to the US rules...
2023-10-2402 min
BARDEHLE IP ExpertsIP Insights: What to bear in mind when making joint inventions
To be updated in German and European patent law, please subscribe to our newsletter, please subscribe to our newsletter.
While collaborations between different companies are more and more common, it is astonishing that jointly owned patents lead to legal issues and questions which are still unresolved and not taught in the textbooks. A playing field for us practitioners. Jan, you are one of these practitioners and regularly advise our clients in this field. Could you please give us a brief overview of such cases?
The good case is when both parties are aware of what...
2023-10-1108 min
BARDEHLE IP ExpertsIP Insights: File wrapper estoppel
For a deep dive into the Unified Patent Court, please visit: https://www.bardehle.com/en/upc-special
In the context of the UPC, the file wrapper estoppel will become highly relevant, because some UPC member states do recognize the file wrapper estoppel in their legal systems. However, other member states, such as Germany, do not. Before we go into detail, Julia, could you explain what “file wrapper estoppel” means?
Under the doctrine of the file wrapper estoppel, statements made by the patentee vis-á-vis the patent office during prosecution are binding. It is noteworthy that in th...
2023-09-2704 min
BARDEHLE IP ExpertsIP Quick Tip. How to choose the right countries for patent protection
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Patent rights are territorial, meaning that they only apply in the countries where you've obtained legal protection. This means, selecting the right countries to protect your invention can be crucial in ensuring that your intellectual property is protected where it matters most.
While there is no one-size-fits-all answer, there are several factors you can use as a checklist when considering where to file or validate your patent.
First, what is your overall business strategy? If your business is already operating in a country, it may...
2023-09-1202 min
BARDEHLE IP ExpertsIP Insights: Copyrights and AI generated works of art
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Philipe, what are AI generated works in the first place and what is the question?
Well, Jan, to put it simply, AI generated works are creations that have been developed by a computer program instead of a human being. The most fundamental question in connection with AI and copyrights is whether such creations are eligible for copyright protection at all. The question arises because, according to our German and also the general European understanding, only humans can be creators in terms of copyright law. In...
2023-08-3006 min
BARDEHLE IP ExpertsIP Quick Tip: Alternative Dispute Resolution
Connect with Pascal Böhner: https://www.bardehle.com/en/team/boehner-pascal
Alternative Dispute Resolution or “ADR” – hence, arbitration or mediation procedures instead of traditional civil court proceedings – has gained momentum in the IP world.
For domain names, for example, there is a well-established practice of resolving disputes in arbitration. But nowadays, ADR has become a hot topic in the patent field, as well. The UPC will have a dedicated Patent Mediation and Arbitration Centre. And arbitration is also a substantial – but maybe one of the most controversial – part of the recently leaked Draft Regulation of the Europe...
2023-08-1602 min
BARDEHLE IP ExpertsIP Insights: Draft SEP Regulation of EU Commission
Read our IP Report on the Draft SEP Regulation: https://www.bardehle.com/en/ip-news-knowledge/ip-news/news-detail/updated-ip-report-on-draft-sep-regulation
Today, Tilman Müller from our Hamburg office and I, Ronja Schregle, will discuss the EU Commission’s draft SEP Regulation. The draft was first leaked at the end of March, and on April 27th, the Commission then published the official version. Both documents triggered a lot of criticism by industry stakeholders and immediately became a hot topic in the patent community. But, before we dive into details of the criticism, Tilman, could you maybe give us a short ove...
2023-08-0205 min
BARDEHLE IP ExpertsIP Quick Tip: National prior rights
Visit our dedicated UPC webpage.
To dive into the mentioned and alluded legal texts, please refer to:
https://new.epo.org/en/legal/epc/2020/a54.html
https://new.epo.org/en/legal/epc/2020/a56.html
https://new.epo.org/en/legal/epc/2020/a139.html
https://new.epo.org/en/legal/epc/2020/a153.html
https://new.epo.org/en/legal/epc/2020/r165.html
https://new.epo.org/en/legal/epc/2020/r159.html
https://new.epo.org/en/legal/guidelines-epc/2023/giv5_2.html
As a general principle, any document published after the filing date of a patent or...
2023-07-1902 min
BARDEHLE IP ExpertsIP Quick Tip: Hague Filings
Connect with Dr. Philipe Kutschke: https://www.bardehle.com/en/team/kutschke-philipe
Read about our services in the area of designs: https://www.bardehle.com/en/competences/legal-areas/designs
One way to obtain international protection for the appearance of your new product are international design filings via WIPO, so called Hague filings. Today, this route enables you to obtain design protection in up to 95 countries worldwide, including the EU, the US, and China.
Hague filings can significantly simplify your design portfolio management and save costs. They are therefore recommendable in many cases. However, despite a...
2023-07-0501 min
BARDEHLE IP ExpertsIP Insights: Prior use rights at the UPC
To dive deep into the Unified Patent Court, please visit: https://www.bardehle.com/en/upc-special
Subscribe to our IP Reports: https://www.bardehle.com/en/newsletter-subscription
Today, Michael Kobler and I will discuss the “Right based on prior use to an invention” in Article 28 of the UPCA. Such prior use right can give the defendant an important defense tool in patent infringement proceedings. Before we go into some detail, Michael, could you summarize the purpose of such prior use right?
Sure, the purpose of the prior use right is to compensate for deficits of the...
2023-06-2105 min
BARDEHLE IP ExpertsIP-Quick-Tip: Protection of Trade Secrets in UPC Proceedings
Dive deeper into the Unified Patent Court: https://www.bardehle.com/en/upc-special
The protection of confidential information was the key topic in the last amendments to the Rules of Procedure and as a result there are now a variety of measures to protect confidential information in both the written and the oral part of the proceedings.
For example, a party may request that certain information in the written pleadings or evidence be kept confidential and, if the Court sees specific reasons for such confidentiality, it will exclude these confidential parts from public access.
2023-05-3101 min
BARDEHLE IP ExpertsIP Insights: The composition of Divisions at the UPC
Get informed about the Unitary Patent and UPC on our dedicated website: https://www.bardehle.com/en/upc-special
Stefan, today we want to talk about the judges at the UPC divisions, in particular our expectations for the German local divisions. But let’s start on a higher level. I think we agree that the German local divisions will become very important venues for UPC actions. Why do you think that is?
One main reason is that due to the high number of patent cases in Germany in the past, all panels at the four local di...
2023-05-1703 min
BARDEHLE IP ExpertsIP Insights: Award of damages before the UPC
To take a deeper dive into the Unitary Patent and Unified Patent Court, please visit our dedicated UPC website: https://www.bardehle.com/en/upc-special
Our colleague Rebecca Jeschke recently explained reasons why damages proceedings before the UPC could be attractive. She mentioned the possibility to obtain interim damages, the request that the infringer shall lay open books, and – last but not least – possibly some new ways to determine damages, which will be our topic today. How does the UPC determine damages?
Article 68 of the UPC Agreement deals with the award of damages. Its third para...
2023-05-1703 min
BARDEHLE IP ExpertsIP Quick Tip: Pros and cons of requesting a Unitary Patent
Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special
Of course, costs are a decisive factor in this decision. Most of you might have heard about the rule of thumb that a traditional European bundle patent is more expensive than a Unitary Patent if validation in four or more member states of the Unitary Patent System is intended.
While this is correct, this rule of thumb compares costs over the entire lifetime of a patent. In practice, however, a significant fraction of all patents is abandoned earlier.
...
2023-05-0302 min
BARDEHLE IP Experts2023 World IP Day: Interview on the motto Women and IP: Accelerating innovation and creativity
On the occasion of the 2023 World IP Day, our partner and attorney-at-law Dr. Tilman Müller and our attorney-at-law Anita Peter spoke to Jane Bu, Senior Director Legal at Via Licensing. They discussed the impact of diversity, accessibility, and inclusion on the field of #IntellectualProperty, Jane Bu’s personal experience during career, and some of her advice for #WomeninIP.
Happy World IP Day everyone!
2023-04-2617 min
BARDEHLE IP ExpertsIP Insights: UPC defense strategies
Get informed about the Unitary Patent and UPC on our dedicated website: https://www.bardehle.com/en/upc-special
Tilman, the UPC is going to open its doors soon. In my mind, this court is a real game changer, since the leverage of a UPC injunction is simply huge. It’s time to start developing efficient defense strategies. What measures would you consider already at this stage?
The UPC makes risk management a top priority. For example, protective letters should be considered to avoid ex-parte preliminary injunctions at the UPC. The recent case law of the Co...
2023-04-1806 min
BARDEHLE IP ExpertsIP Insights: Patenting the metaverse
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In the last 3 decades we have seen a tremendous development of the World Wide Web. The latest development has created an even more futuristic vision, and part of this vision is the metaverse. But what is the metaverse?
The metaverse, Nadine, is basically a virtual 3D environment where you can, via your avatar, experience and interact in this environment. Imagine a parallel digital world, where you can meet friends or try out and buy new products. As an economic example, imagine a company that has...
2023-04-0504 min
BARDEHLE IP ExpertsIP Quick Tip: Injunctive relief in infringement proceedings before the UPC
Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special
The question of how likely it is to obtain injunctive relief against patent infringers will be a driving factor for the attractiveness of the UPC system. So, let’s have a quick look at the setting that the UPC system provides for injunctive relief.
In substantive terms, the Agreement on a Unified Patent Court provides that a patent proprietor has the right to prevent any third party from making use of the invention.
Article 63, however, which governs the po...
2023-03-2202 min
BARDEHLE IP ExpertsIP Quick Tip: SEP litigation in Germany
Traditionally, standard-essential patents were particularly litigated in the sector of telecommunications. However, that has changed. The focus shifted in the last couple of years towards the automotive industry – I want to give you the buzzword connected cars – and is now shifting even further to the Internet of Things – IoT.
German Courts have focused, in the last couple of years, very much on the issue of the willingness to take a license on the side of the license seeker. And they have applied quite strict standards which led to many injunctions issued against implementers.
However, there is sti...
2023-03-1506 min
BARDEHLE IP ExpertsIP Quick Tip: Plausibility at the EPO
Subscribe to our IP Reports: https://www.bardehle.com/en/newsletter-subscription
Plausibility as such is not a patentability requirement at the European Patent Office. However, plausibility is highly relevant particularly in medical use cases, or for inventions relating to artificial intelligence. This is due to the fact that a technical teaching is only considered disclosed in an enabling manner if it was at least plausible for the skilled person at the effective filing date that the claimed technical effect could actually be achieved. On the other hand, the teaching of a prior art reference is only relevant...
2023-03-0802 min
BARDEHLE IP ExpertsIP Quick Tip: Which language to choose when drafting and filing a European patent application at the EPO
To stay up to date on IP-related issues, please subscribe to our newsletter: https://www.bardehle.com/en/newsletter-subscription?email=
The official languages at the EPO are English, French and German. However, it is possible to file a European patent application in any language, for example Italian or Swedish; and then to file a translation in one of the official languages. This is a common practice in my home country Spain: many applicants file a European patent application in Spanish and then file a translation in English.
However, it is important to bear in mind...
2023-02-2202 min
BARDEHLE IP ExpertsIP Quick Tip: Cost reimbursement at the UPC where multiple parties are involved
To sign up for our newsletter, please visit: https://www.bardehle.com/en/newsletter-subscription?email=
At the UPC, the successful party can request reimbursement of their actual costs from the unsuccessful party up to a ceiling that depends on the value of the proceedings.
The UPC Regulations do not specify, however, how cost reimbursement claims are determined and enforced if multiple parties are involved on either side. In a scenario with multiple defendants, this may result in the plaintiff claiming full cost reimbursement from one defendant, and this defendant not being able to at least...
2023-02-1501 min
BARDEHLE IP ExpertsIP Quick Tip: Determination of damages and compensation before the UPC
Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special
Proceedings on the amount of damages do not take place very often. It is even rarer for them to be conducted through till the end, at least from a German perspective, as they are time consuming and expensive. This might change with the UPC.
Similarly as in German proceedings the Rules of Procedure also provide for separate proceedings on the amount of damages. However, the court may order an interim award of damages to the successful party in the decision...
2023-02-0802 minBARDEHLE IP ExpertsIP Quick Tip: Avoiding mistakes in AI-related patent applications
For more on patent prosecution, please visit our website: https://www.bardehle.com/en/competences/legal-areas/patent-prosecution
Today, I would like to provide you with some guidance on how to avoid three typical mistakes that I frequently encounter in patent applications relating to AI-based inventions.
These mistakes are:
1) Divided infringement,
2) insufficiency of disclosure, and
3) lack of plausibility
So, how can these mistakes be avoided?
In practice, an AI model may be trained by a first entity, whereas the trained model may then be used by a second entity. Hence, a claim that is...
2023-02-0102 min
BARDEHLE IP ExpertsIP Quick Tip: Period of limitation under the UPC Agreement
Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special
Welcome to today’s IP Quick Tip on the period of limitation under the Agreement on a Unified Patent Court and possible interpretations of the new legal framework.
Let us have a brief look at Article 72 UPCA:
First, the provision on the period of limitation refers to Art. 24 UPCA, which relates to the sources of law on which the Unified Patent Court is to base its decisions. Here, the key question is whether national law on the period of...
2023-01-2503 min
BARDEHLE IP ExpertsIP Quick Tip: Enforcement of UPC decisions
Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special
As a general rule, decisions and orders by the UPC are enforced in accordance with the law of the Member State where the enforcement takes place. However, if the UPC Agreement or the UPC’s Rules of Procedure include specific provisions for enforcement, these provisions prevail over those of national law.
This is relevant, for example, for the enforcement of injunctions, which is governed by Article 63 of the UPC Agreement and Rule 354(4) RoP. Similarly to German law, non-compliance with an in...
2023-01-1801 min
BARDEHLE IP ExpertsIP Quick Tip: Cost reimbursement involving interveners at the UPC
For a deeper dive into the Unified Patent Court and Unitary Patent, please visit our dedicated UPC website: https://www.bardehle.com/en/upc-special
Under German law, interveners have a rather comfortable situation with regard to cost reimbursement. If they support the successful party, they have a claim for cost reimbursement of their own against the unsuccessful party. If they support the unsuccessful party, they are not liable for the costs of the successful party.
This appears to be different at the UPC, since there are no specific regulations for cost reimbursement involving interveners. Thus...
2023-01-1101 min
BARDEHLE IP ExpertsIP Quick Tip: Rules on evidence before the UPC
To get informed about the Unitary Patent and the Unified Patent Court, please feel free to download our IP Brochure.
From the German perspective, the rules on evidence before the UPC provide for an interesting mix of known principles and new regulations.
What we are familiar with, for example, are the means of obtaining evidence mentioned in the UPC Agreement, such as hearing of the parties and witnesses, opinions from Court experts, production of documents and inspection of places or physical objects, or the rules on burden of proof.
What is new, for...
2022-12-2101 min
BARDEHLE IP ExpertsEPO opposition and UPC revocation proceedings
For a deeper dive into the Unified Patent Court and the Unitary Patent, please visit our dedicated UPC website.
With the official start of next spring on the first of March 2023, the sun will rise at last over the frozen landscapes of the UPC member states. The UPC agreement itself will subsequently come into force on the first of June 2023.
With it, there will be significant changes to the way that the validity of a European patent can be challenged, which will be the topic of this podcast.
My name is Johannes Möl...
2022-12-1408 min
BARDEHLE IP ExpertsIP Quick Tip: Trademarks for the Metaverse 101
Get informed about our trademark-related services: bardehle.com
The good news is that there is not yet a trademark office in the Metaverse. This also means that you should be suspicious should you receive any emails or letters from a Metaverse trademark office asking for payments.
Trademarks for the Metaverse have to be filed with the usual suspects: the physical trademark offices all around the world. Based on what the EUIPO has published so far, here is what you should know when drafting the list of goods and services of your EU trademark applications for...
2022-12-0702 min
BARDEHLE IP ExpertsIP Quick Tip: Double patenting in Europe
For a deep dive into the Unitary Patent and Unified Patent Court, please visit: https://www.bardehle.com/en/upc-special
Most European jurisdictions, including Germany, have prohibited double patenting for a long time. This means granting one applicant two patents with identical claims. Also, the EPO’s Enlarged Board of Appeal held in its decision G 4/19 that an applicant has no legitimate interest in obtaining two European patents for identical subject-matter.
However, this does not mean that an applicant cannot be granted two patents for one invention in Europe. Also, with the upcoming UPC, it is...
2022-11-3002 min
BARDEHLE IP ExpertsIP Expert Talk: Supplementary Protection Certificates in the system of the Unified Patent Court
Visit our dedicatd UPC page.
Study on the legal aspects of Supplementary Protection Certificates in the EU](https://www.ip.mpg.de/en/research/research-news/study-on-supplementary-protection-certificates.html)
Call for statements regarding initiative by the European Commission
Finally, the Unified Patent Court (the UPC) could open its doors in April 2023. This new system will not only affect patents but will also have an immediate impact on Supplementary Protection Certificates (SPCs in short). The UPC will provide a new central forum for enforcing and challenging SPCs from day one, while broader changes to the SPC system may also be...
2022-11-2208 min
BARDEHLE IP ExpertsIP Expert Talk: Amending the description
Stay updated on IP-related news: https://www.bardehle.com/en/ip-news-knowledge/ip-news
Amending the description is a requirement that applicants don’t need to deal with in many other countries, like the U.S., for example.
That’s right. But at the EPO, towards the end of the examination proceedings, we have to adapt the description. So, this means for example we need to remove parts of the description that could imply that the scope of protection is actually broader than what is claimed. So, the typical phrases of “spirit of the invention” and also generic...
2022-11-0304 min
BARDEHLE IP ExpertsIP Quick Tip: The practical relevance of preliminary injunctions at the UPC
To register for our webinar IP Experts LIVE on the sunrise period of the UPC, please visit: https://www.bardehle.com/en/ip-news-knowledge/ip-events/detail/the-sunrise-period-preparing-for-the-start-of-the-unitary-patent-and-unified-patent-court
Today, I am going to talk about the practical relevance of preliminary injunctions (PIs) for patent infringement at the UPC.
The respective national case law is all but uniform. In Dutch patent litigation, for example, PIs are very relevant. In contrast, they hardly ever play a role in the UK. In France, their importance has been increasing recently but is still far from day-to-day practice. In Germany, the landscape...
2022-10-2504 min
BARDEHLE IP ExpertsIP Expert Talk: The jurisdiction of the UPC
To get informed about the UPC, please visit our special UPC page: https://www.bardehle.com/en/upc-special
We are steadily approaching the take off for the UPC system, hence, it is worth taking a closer look at a topic that is, admittedly, not the most tangible one, but indeed very important. We are talking about the international jurisdiction of the Unified Patent Court, the UPC. Especially at the beginning of the new system you will either want to try out the new system or you will be dragged into proceedings before that new court. The decisive...
2022-10-1908 min
BARDEHLE IP ExpertsIP Expert Talk: The period of limitations under the UPCA
Visit our special UPC page: https://www.bardehle.com/en/upc-special
In this episode, we will briefly discuss the prerequisites of the period of limitations under the Unified Patent Court Agreement (the UPCA) and potential interpretations of the new legal framework.
Dominik, you have certainly heard the saying: “Those who are late, will be punished by life itself.”? This phrase, first said in 1989 on the occasion of a meeting between Gorbachev and Honnecker, still serves as a reminder today – and is also relevant under the UPCA.
As a reminder for our listeners Art. 72 UPCA r...
2022-10-1308 min
BARDEHLE IP ExpertsIP Expert Talk: The UPC and license agreements
To get informed about the UPC, visit our special UPC page.
In this episode, we will briefly discuss how existing and future license agreements are impacted by the upcoming Unified Patent Court and why you should take some time to examine your license agreements now. My name is Alexander Haertel, I am an attorney-at-law and partner with BARDEHLE PAGENBERG focusing on patent Infringement proceedings.
And I’m Jan Bösing, also an attorney-at law and partner at BARDEHLE PAGENBERG with a focus on patent infringement proceedings, but also on IP transactions such as License Agreements, whi...
2022-09-2007 min
BARDEHLE IP ExpertsIP Expert Talk: Court fees and cost reimbursement at the Unified Patent Court
Click to visit our special UPC page.
Click to read the rules on Court fees and recoverable costs
Stefan, I think the costs at the Unified Patent Court, that is the UPC, is an essential topic for our clients, so let’s jump right into it.
Thank you, Jan. I fully agree that costs are an important topic with many interesting aspects. And of course whenever we talk about costs, a lot of numbers are involved. However, we will try to avoid just reading out numbers today, because you can just take them from the Rules and Gu...
2022-09-1415 min
BARDEHLE IP ExpertsIP Quick Tip: Preliminary injunction proceedings in trademark litigation
For a deeper dive into this topic, please read our IP Brochure on trademark protection in Europe: https://www.bardehle.com/en/ip-news-knowledge/publication/detail/trademark-protection-in-europe
Obtaining an ex-parte court decision has proven to be a very sharp sword in combating infringement.
But a couple of points need to be observed: The case must be clear-cut with prima facie evidence presented by way of an affidavit.
As a rule, a warning letter must be sent to the adverse party before taking action.
And the request for a preliminary injunction must be...
2022-08-0201 min
BARDEHLE IP ExpertsIP Quick Tip: Opting out your patents of the Unified Patent Court
Get informed about the Unified Patent Court: https://www.bardehle.com/en/upc-special
Most of you will have heard that the start of the Unitary Patent system is imminent. It is expected for the end of this year [2022].
Granted unitary patents can be asserted in all member states with a single complaint, including Germany, France and currently 15 other European countries.
In turn, unitary patents may also be revoked in all member states by a single revocation action at the Unified Patent Court that is currently being set up.
Some stakeholders may...
2022-07-2602 min
BARDEHLE IP ExpertsIP Insights: Domains and domain names
Read the German Chapter on Domains and Domain names of the 2022 Getting the Deal Through: https://www.bardehle.com/en/ip-news-knowledge/publication/detail/getting-the-deal-through-domains-and-domain-names-germany-2022
Pascal: Let’s start with a very general question: Can you sell and buy .de domain names?
Yes, as a matter of principle, you can, although, technically, it’s a bit different, because domain names, here in Germany, are not treated as a property, or as an intellectual property right, that can be transferred. What you actually do is assign the contractual relationship that you have with the Registry – the DENIC is, in...
2022-07-1904 min
BARDEHLE IP ExpertsIP Quick Tip: Easily avoidable errors in EU design applications
Design filings seem so easy. However, as in many jurisdictions registered designs are unexamined rights, deadly mistakes may only become visible once you try to enforce your design rights. These are the “top three” mistakes you should try to avoid:
Inconsistency of representations. Ensure all views of your design are consistent. If you wish to avoid a detailed search for inconsistencies, you may prefer using a 3D file to create your representations for the design filings.
Ambiguous elements in representations. In case your design application may be the basis for foreign filings, make sure the type...
2022-07-1202 min
BARDEHLE IP ExpertsIP Insights: VICO with the EPO
Like it or not, participation in oral proceedings with the EPO has been primarily limited to video conferencing or so-called “VICOs”.
The legality of this has already been discussed at great length, for instance, in our own feedback to the EPO as published on our website. However, in the meantime, this is the “new normal” that applicants, patent attorneys, and examiners are faced with.
I am here with my colleague Preston Richard, and we would like to share some of our own experiences of VICOs with you.
Preston, are there any exceptions to VICO?
In pri...
2022-07-0506 min
BARDEHLE IP ExpertsIP Quick Tip: Preliminary injunctions before the UPC
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IP QuickTip Bösing: “Preliminary injunctions before the Unified Patent Court”
Welcome to this IP Quick Tip on preliminary injunctions before the UPC.
Just like in the German patent system, the UPC will provide preliminary injunctions against patent infringement. To obtain a preliminary injunction, the patentee must demonstrate that they are entitled to initiate the proceedings, that the patent in question is valid and infringed, or that such infringement is imminent.
The court then has the discretion to ei...
2022-06-2802 min
BARDEHLE IP ExpertsIP Expert Talk: The interplay between patent prosecution and patent litigation
Hello everyone. Today, my colleague Johannes Heselberger and I want to discuss the interplay between patent prosecution and patent litigation. While patent prosecution is often a “bulk business” which should generate large numbers of patents at comparably low cost per patent, patent litigation, in contrast, is necessarily only led with few selected patents and is much more expensive per patent. For an overall satisfying patent strategy, it is important to consider the interplay between prosecution and litigation.
I agree. It is important to remind oneself that patent protection is not only the classical aspect of deterring competitors from...
2022-06-2106 min
BARDEHLE IP ExpertsIP Expert Talk: Third-party notices - part II
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Welcome back to our IP Expert Talk on third-party notices. In the second part we will talk about strategic considerations for bringing a third-party notice. Stefan, you mentioned in the first part mentioned the increase in the cost risk for a Plaintiff – can you explain that in more detail?
Yes, sure, Johannes. In IP litigation in Germany, the main principle is that the losing party must reimburse the statutory fees to the winner, namely court fees - if not advanced by th...
2022-06-1406 min
BARDEHLE IP ExpertsIP Expert Talk: Third-party notices in IP litigation
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Hello everyone. Today, we will discuss the topic of “third-party notices” in IP litigation in Germany. This procedural instrument allows the Defendant of an infringement lawsuit to ensure that the findings in the judgment of such lawsuit, for example the confirmation of infringement, are binding for a court in a subsequent lawsuit between the Defendant and the Third Party, for example the supplier of the Defendant, when it comes to recourse claims of the Defendant. Moreover, a third-party notice usually triggers an intervention of t...
2022-06-0705 min
BARDEHLE IP ExpertsIP Quick Tip: Bifurcation at the UPC
Welcome to this IP Quick Tip on bifurcation at the UPC.
The UPC will not adopt the German bifurcated patent system. Rather, the UPC has competence in infringement actions and revocation actions. The revocation of a patent can be requested either as a counterclaim in an infringement action or by an independent revocation action at the central division.
However, there are scenarios in which different UPC divisions may decide on infringement and validity.
For example, if an infringement action is pending at a local or regional division and the defendant files a counterclaim...
2022-05-3102 min
BARDEHLE IP ExpertsIP Quick Tip: The costs of a unitary patent
The unitary patent is a new option after a grant of a regular EP patent. So, there will be no changes in the proceedings up to grant.
After the grant of the EP patent, an applicant may choose to request a unitary patent with the EPO. While the request itself is free, applicants have to supply one translation of the specification together with the request.
Further, for each unitary patent a renewal fee has to be paid to the EPO. The amount of this renewal fee corresponds to the sum of the respective renewal fees...
2022-05-2402 min
BARDEHLE IP ExpertsIP Quick Tip: How and when can you get a unitary patent?
Welcome to today’s IP Quick Tip about unitary patents.
According to the currently expected timeline, the first unitary patents may be granted already by the end of this year.
But what do you need to do to get a Unitary Patent?
Well, first you need a regular European patent application at the EPO.
Then, within one month after grant, you need to file a request for unitary effect such that the granted patent becomes a unitary patent that can be asserted in all member states of the unitary patent system wi...
2022-05-1702 min
BARDEHLE IP ExpertsIP Quick Tip: PCT Chapter II proceedings
Read our IP Brochure on Patent Applications under the PCT.
Connect with Henry Selby-Lowndes.
Hello everyone and welcome to today’s IP Quick Tip on Patent Cooperation Treaty, or PCT, Chapter II proceedings.
Chapter II is an optional further round of international examination which can give Applicants an additional chance to address objections raised in the opinion of the International Search Authority before that same patent authority.
Since every contracting state has its own criteria for assessing patentability, this might seem like an extra layer of unnecessary costs.
This is probably the case if only mi...
2022-05-1002 min
BARDEHLE IP ExpertsIP Insights: Patentability of computer-implemented simulations
Visit our European Software Patents Knowledge Base for more of EPO's case law.
Can a simulation as such be patented at the EPO?
Yes, it can. However, only under specific circumstances.
According to G1/19, if the output of a simulation is intrinsically technical, the simulation can be patented. A simulation can be patented if it is adapted to the internal functioning of the computer on which it is executed. Other criteria, as for example mentioned in the amicus briefs, were found to be not sufficient.
In particular, it is not sufficient that the...
2022-05-0408 min
BARDEHLE IP ExpertsIP Quick Tip: Domain names
Read our IP Brochure on Domain Name Law.
Connect with Pascal Böhner.
If you are a brand owner, you are often faced with infringing domain names which are registered for third parties and incorporate your brand or trademark – offering counterfeits, for example.
You may challenge.com domains and many others by initiating arbitration proceedings, particularly under the UDRP.
For the German .de domain names such arbitration proceedings are not available. Does this mean that you always have to initiate full court proceedings? No – and here’s our tip why:
Any registr...
2022-04-2602 min
BARDEHLE IP ExpertsIP Insights: Supplementary protection certificates
Read our IP Brochure on supplementary protection certificates.
Today, we will discuss some recent developments regarding Supplementary Protection Certificates or, in short: SPCs. An SPC is a discrete protective right that prolongs the protection conferred by a patent for a medicinal product or a plant protection product for a certain period of time in view of the marketing authorization procedure that these products need to undergo prior to their marketing. SPCs have been hotly debated since their introduction in the 1990s by an EU regulation. Why is that? Because many medicinal products yield their profit only at...
2022-04-1905 min
BARDEHLE IP ExpertsIP Quick Tip: How to accelerate proceedings at the EPO
Connect with Preston Richard.
Hello and welcome to this IP Quick Tip on how to accelerate prosecution at the European Patent Office.
Depending on the strategy, you may wish to obtain a granted patent faster. Here are four tips for you as an applicant on how to accelerate the process.
Deciding where to file your application can impact the timelines.
For instance, for first filing, the EPO aims to issue a search opinion within 6 months. Should you decide to use the PCT route, using EPO as the International Search Authority avoids the need...
2022-04-1202 min
BARDEHLE IP ExpertsIP Insights: Application strategies for trademarks and designs
Download our IP brochures on design protection in Europe and trademark protection in Europe.
We will address some issues regarding the complex relationship between trademarks and designs.
We have seen a lot of cases in the past, and also recently, of conflicts between trademarks and designs involving icons such as the STABILO pencil, or the VESPA scooter, or the RUBIK’s cube.
Absolutely. It’s not only conflicts but about overlap and even overreach! I think, this comparison is fascinating because it’s not about conflicts only but about coexistence.
There are re...
2022-04-0504 min
BARDEHLE IP ExpertsIP Quick Tip: Preliminary injunction proceedings for patent infringement
Connect with Prof. Dr. Tilman Müller-Stoy: https://www.bardehle.com/en/team/mueller-stoy-tilman
Today’s quick tip is about preliminary injunction proceedings for patent infringement in Germany.
According to the established case law of the most prominent German appellate courts in Duesseldorf and Karlsruhe, a successful PI request – as a rule – requires a battle-tested patent. That means the patent must have survived first-instance opposition or nullity proceedings. The appellate court of Munich joined the club at the end of 2019, aligning its case law to Duesseldorf and Karlsruhe, and lifted a PI granted by the first-i...
2022-03-2902 min
BARDEHLE IP ExpertsIP Insights: Third-party observations
Connect with Dr. Christof Karl: https://www.bardehle.com/en/team/karl-christof
Connect with Preston Richard: https://www.bardehle.com/en/team/richard-preston
Hello, everyone. Many of you know that you can attack a patent by opposition proceedings or national revocation proceedings. But did you know that you can act even before a patent is granted? One such tool is called “third-party observation”, and we’re going to talk about it today. My name is Christof Karl and I’m here with my colleague Preston Richard. So, Preston, what is a third-party observation?
Many IP offices...
2022-03-2304 min
BARDEHLE IP ExpertsIP Quick Tip: The inescapable trap at the EPO
Connect with Tobias Kaufmann: https://www.bardehle.com/en/team/kaufmann-tobias
In 1994, with its landmark decision G 1/93. the EPO’s Enlarged Board of Appeal gave birth to the principle of the “inescapable trap”: If an application is amended during prosecution with a limitation that is, post-grant, found to be not originally disclosed, and the limitation cannot be replaced without violating the prohibition of post-grant extension of protection, the patent must be revoked. Now, almost 20 years later, patents still regularly die due to this principle, with their innovative value not taken into account at all.
What can yo...
2022-03-1503 min
BARDEHLE IP ExpertsIP Insights: Proportionality considerations in IP
Connect with Pascal Böhner: https://www.bardehle.com/en/team/boehner-pascal
Connect with Dr. Michael Kobler: https://www.bardehle.com/en/team/kobler-michael
What do we do if an infringement does not cover the whole product but only a part of the product? Take, for example, the light of a car, not the whole car. This has become a hot topic in patent litigation as there are new legal developments and a draft bill that is discussed. Before we speak about this draft bill, what is the current situation? Can you give us an overview?
2022-03-0706 min
BARDEHLE IP ExpertsIP Quick Tip: Why drafting good patents is key
Connect with Dr. Georg Anetsberger: www.bardehle.com/en/team/anetsberger-georg
Learn more about patent prosecution: https://www.bardehle.com/en/competences/legal-areas/patent-prosecution
If you are active on the technology market, being sued for alleged patent infringement is a general business risk.
Of course, it is important to prepare suitable defense strategies, based on a diligently chosen design-around, or prior art that can be used to invalidate the asserted patent.
But at the same time, often literally the best defense is provided by a good offense.
If you...
2022-03-0102 min