知識は分かち合えば2倍になります。

Im aktuellen Chambers Europe Guide wurde Grünecker mit einem Tier 1 Ranking für „Patent Prosecution“ ausgezeichnet. Weiter wurden wir auch in den Kategorien „Patent Litigation“, „Trademark and Unfair Competition“ sowie in der neuen „Kategorie Patent Attorneys: Contentious“ gelistet.

Mandanten betonen, dass „Grünecker eine ausgezeichnete Kanzlei mit...

As of April 1, 2024, the European Patent Office (EPO) will again increase its fees.

As published recently, the Administrative Council of the European Patent Organisation has decided to amend the Rules relating to Fees.

Generally, the increase amounts to about 4%. Some rarely used fees have been cancelled.

The biggest impact is on the renewal...

Grünecker has once again been honoured by the Legal500 editorial team as one of Germany's leading law firms for trademarks. In the category unfair competition the firm was ranked in Tier 2.

In trademark law, the firm "counts numerous global corporations among its client base, for which it conducts and coordinates market entries and proceedings at...

In the new Legal500 ranking, Grünecker has once again been recognised with a Tier 1 ranking for patent prosecution. The firm was also awarded another Tier 2 ranking in the area of patent litigation: patent lawyers. In the category patent litigation: solicitors, Grünecker was listed in Tier 3.

"Grünecker has one of the most active filing practices...

Grünecker was once again recognised as a gold tier firm in this year's WTR 1000 ranking. The law firm was also listed as silver tier in the category “European Union Intellectual Property Office.” According to the WTR editorial team, Grünecker has "one of Germany’s deepest IP benches and some of the country’s best-known practitioners." According to...

The "Handelsblatt" of December 4, 2023 reports in detail on the law firm's current patent study in the company section:
"German automotive manufacturers double patents in China - In the Chinese market for electric cars, German patents do not play a role.
A patent study now shows how BMW, Mercedes and VW want to catch up."

The analysis of the Munich...

The new JUVE ranking attests that "Grünecker is positioned in the German market for patent disputes with a leading team of patent attorneys". The attorneys are also highlighted and praised for their "strong position especially regarding patents for mechanics, semiconductors and mobile communications."

According to JUVE, the firm "sets itself...

In the new edition of the JUVE Handbook, the editors praise the firm's "strong profile of its own in soft IP" and highlight its expertise in anti-counterfeiting and protection against imitation. The editors note that the Grünecker team has "built up an extensive service over the years" that "more and more clients from the luxury goods sector...

Grünecker has once again been recognized at the prestigious Managing IP Awards. For the second time in a row the firm was honored as "European Patent Prosecution Firm of the Year" and also received the award as "Germany Patent Prosecution Firm of the Year".

The awards were accepted by André Nickel, Jegannath Korukottu and Sebastian Ochs at an...

In the 2024 edition of the Handelsbaltt and Best Lawyers ranking, a total of 25 Grünecker patent attorneys and attorneys-at-law were recognised as leaders in their respective fields:

• Dr. Bernd Allekotte

• Bernd Bartelsen

• Dr. Elvira Bertram

• Rainer Bertram

• Dr. Martin Bierbaum

• Dr. Ulrich Blumenröder

• Björn-Alexander Bockelmann

• Dr. Nicola Busch

• S...

With the appointment of three Associate Partners at its Munich office, Grünecker further strengthens its expertise in the areas of patent and trademark law. Cornelia Schmitt, Yilin Jin and Jeg Korukottu have a wide range of expertise and continue to expand Grünecker’s global reach.

Yilin Jin is a German and European Patent Attorney. He represents...

The European Patent Office (EPO) will again increase its fees as of April 1, 2023.

As published recently, the Administrative Council of the European Patent Organisation has decided to amend the rules relating to fees In most cases, fees will increase. 

Generally, the increase amounts to about 5%. The renewal fees will also increase. As in the...

After Germany has ratified the Unified Patent Court Agreement (UPCA), the UPC court will now come into effect from June 1, 2023.

From this date, it will be possible to obtain Unitary Patents (European patent with Unitary effect), initiate infringement law suits and invalidation procedures before the UPC.

If the UPC is not of interest, then until...

Grünecker has received a Tier 1 ranking for Patent Prosecution, a Tier 4 ranking for Patent Litigation and a Tier 2 Ranking for Trade Mark and Unfair Competition in the latest Chambers Global guide.

Clients note that “the team at Grünecker is very sharp, practical and responsive” and that the “service level at Grünecker is very strong”. Moreover,...

Grünecker was again recognised as one of Germany's leading law firms for patent prosecution and trademark law. Moreover, Grünecker improved from a Tier 3 ranking to a Tier 2 ranking in the areas of patent attorneys: patent litigation and competition law. In the area of solicitors: litigation the firm was ranked in Tier 3.

“Grünecker is one of the...

Grünecker has again been recognised as a gold tier firm in the 2023 WTR 1000 Ranking. The firm, which handles more than 500 mostly cross-border trademark disputes a year is described by the WTR editors as “being up there with the best in the world” and “providing top-notch, practical legal advice, understanding the business goals of their clients...

On December 5, 2022, the Unified Patent Court (UPC) announced, that Germany will be asked to postpone depositing its certificate of ratification of the Unified Patent Court Agreement (UPCA) in Brussels to February 2023. Provided there are no further delays, the “Sunrise Period” will then start on March 1, 2023. The Unitary Patent System is then...

Soon it will be possible to hold patent litigation in one forum, the Unified Patent Court, for European patents valid in jurisdictions, which are part of the UPC agreement. The court is expected to be operational in the first half of 2023, as of June 1.

Please click here to access the full article written by Thomas Kronberger and Fabian...

The Unified Patent Court (UPC) announced today that the start of the Sunrise Period is postponed to March 1, 2023 instead of the previously scheduled date of January 1, 2023.

Germany will also be asked to deposit its ratification of the UPC Agreement in February 2023 rather than December 2022 as planned. As a result, the UPC is expected to start...

In its current ranking JUVE states that Grünecker “is positioned in the German market for patent disputes with a leading team of patent attorneys and a team of lawyers that is close behind the top of the market”. The editors note further that the firm “sets itself apart from competitors by appearing in proceedings with mixed teams”.

The...

In the new edition of the JUVE Handbook, the editors praise the “comprehensive range of advice and litigation” and attest to the team's “excellent reputation in trademark law”. In addition to representing well-known luxury goods manufacturers, JUVE highlights the know-how in the technology sector, which is one of the team's “proven specialties”. ...

At this year's Global IP Awards, Grünecker was awarded the title "Trademark Prosecution Firm of the Year" by IAM and WTR.

The Global IP Awards recognize the outstanding achievements of law firms in the fields of trademark and patent law. The awards ceremony, held in London on September 15, honored leading global law firms whose achievements in the...

The solid-state battery is expected to bring the final breakthrough for the e-car. Batteries that, simply put, store electricity in solid materials will replace today's liquid-filled batteries.

Partner Jens Koch and patent attorney Sebastian Flach evaluated the latest state of research as part of the Grünecker Patent Study 2022.

The study shows...

Grünecker was awarded the rating "Leading" by Leaders League in the categories of Patent Prosecution and Trademark Prosecution and "Excellent" in the areas of Patent Litigation and Trademark Litigation.

Furthermore, the following individuals were awarded:
•    Dr. Bernd Allekotte
•    Dr. Ulrich Blumenröder
•    Anja Franke
•    Dr. Holger Gauss
•   ...

IAM 1000 has awarded Grünecker the rating "highly recommended" in the category Patent Prosecution & Nullity. IAM describes Grünecker’s teams as "very dedicated and responsive that go the extra mile to get to know their client and its practice area."

In the category Infringement, the firm was able to secure a silver-tier ranking.

In addition,...

In the 2023 edition of the Best Lawyers ranking, a total of 25 Grünecker patent attorneys and attorneys-at-law were recognised as leaders in their respective fields:

• Dr. Martin Ahr
• Dr. Bernd Allekotte
• Bernd Bartelsen
• Dr. Elvira Bertram
• Rainer Bertram
• Dr. Martin Bierbaum
• Dr. Nicola Busch
• Dr. Martin Dropmann
• Dr. Thomas Eickelkamp
• Dr. Patrick P. Erk
• Tommy...

In der neuen Ausgabe des IP Stars Ranking wurde Grünecker erneut mit einem Tier 1-Ranking für Patent Prosecution ausgezeichnet und kann damit seine Position als eine der führenden Kanzleien Deutschlands sichern. Außerdem wurde Grünecker im Bereich Patent Litigation in Tier 2 gelistet.

Reinhard Knauer, Thomas Schuster und Dr. Heike Vogelsang-Wenke...

In the new edition of the IP Stars ranking, Grünecker was awarded a Tier 1 ranking for Trademarks, thus securing its position as one of the leading law firms in Germany.

IP Stars covers contentious and non-contentious IP work in more than 70 jurisdictions, making it one of the most comprehensive and widely respected IP guide in the legal...

The German Patent and Trademark Office (DPMA) has announced that Article 2 of the Second Act to Simplify and Modernise Patent Law (Second Patent Law Modernisation Act – 2. Patentrechtsmodernisierungsgesetz) will extend the time limits for PCT applications to enter the national phase before the DPMA as designated Office (Article III section 4 of the...

Grünecker has appointed three new Associate Partners, Dr. Markus Grammel, Sebastian Ochs and Philipp Strommer at its Munich office. The firm thus strengthens its expertise in the three core areas.

Dr. Markus Grammel is a German and European Patent Attorney primarily representing clients from the biotechnology and pharmaceutical chemistry sectors....

The German Patent and Trademark Office (DPMA) as of May 1, 2022, and July 1, 2022, respectively, will increase its annuity fees.

The German Patent and Trademark Office has decided to increase the renewal fees for supplementary protection certificates as of May 1, 2022, and for patents starting from the 5th annuity fee onwards as of July 1, 2022...

The European Patent Office (EPO) as of April 1, 2022 will increase its fees.

As published recently, the Administrative Council of the European Patent Organisation has decided to amend the Rules relating to Fees. In most cases, this amendment will result in a fee increase. An overview of the most important changes is provided below.

Generally,...

Grünecker has again been recognised as a gold tier firm in the new WTR 1000 ranking. The firm, which filed 369 EU trademarks, 166 German trademarks and 37 international trademarks in 2020, is described by the editors as a “force to be reckoned with in the German trademark space”. Competitors call the firm “pragmatic, hands-on and tough but fair”....

With the Protocol on the Provisional Application of the Unified Patent Court Agreement (UPCA) in force since mid-January, the penultimate step towards the Unified Patent system has been achieved. From now on final preparations can be initiated such as appointing judges, implementing user-friendly IT systems and re-allocating court sections that...

A valid priority claim requires not only that claimed subject matter be fully disclosed in an earlier priority application (material priority entitlement) but also that the party claiming priority had the right to do so when exercising that right (formal priority entitlement). Recent years have seen a rise in the number of cases relating to the...

Wolfgang Neubeck and and Julie Monteil of the firm’s offices in Munich and Paris attended the first-ever oral proceedings held in an opposition proceedings against the validity of a French patent. The in-person proceedings, held January 25, 2022, took place at the French patent office INPI in Courbevoie close to Paris. The possibility to oppose a...

Grünecker was again recognized as one of Germany's leading law firms for patent prosecution. In addition, the trademark team secured the top position for the second time in a row. In the areas of patent litigation and competition law, the firm was ranked in Tier 3 respectively.

"Grünecker is known as one of Germany's most active filing practices...

In its current ranking JUVE assesses the patent litigation team at Grünecker as "strongly positioned across Europe in many technical areas". This has enabled the "small but powerful litigation team to join the circle of market leaders". JUVE further notes that the "market-leading patent attorneys", together with Grünecker’s own attorneys-at-law,...

"More than almost any other of the large mixed IP firms, Grünecker has built up an extremely active team of lawyers in trade mark and competition law," praise the JUVE editors in the new edition of the handbook. Various competitors describe Grünecker as a "top firm" and "very modern". According to JUVE, this combination "regularly appeals to many...

For the time being, German car manufacturer will continue purcharsing the core of their electric cars, the battery, in China. This shows the Grünecker patent study for the IAA 2021. Partner Jens Koch and patent attorney Sebastian Flach analyzed the patent applications around batteries for electric cars worldwide.

"The basis for the best...

Even before Brexit, Grünecker already had a core team of UK Chartered Patent & Design Attorneys and a Solicitor of England and Wales to assist clients with their UK IP needs. Thus, Grünecker was perfectly placed to add a UK Address for Service (AfS) in compliance with the Brexit regulation requiring a UK AfS for all new matters arising before the...

The German Federal Constitutional Court announced on 9 July that it rejects the urgent applications against the Act on the Agreement of 19 February 2013 on a Unified Patent Court as inadmissible. Even though the decision was only on the motion for a preliminary decision, it is to be expected that the Federal President will now sign the Act and that...

IAM 1000 has awarded Grünecker the rating "highly recommended" in the category Patent Prosecution & Nullity. In the category Infringement Proceedings, the firm was able to secure a silver-tier ranking.

In addition, partners Dr. Bernd Allekotte, Dr. Ulrich Blumenröder, Dr. Thomas Eickelkamp, Dr. Moritz Höffe, Reinhard Knauer, Dr. Peter Miltényi,

In the new edition of the IP Stars ranking, Grünecker was awarded a Tier 1 ranking for Patent Prosecution, thus securing its position as one of the leading law firms in Germany. Furthermore, Grünecker was listed in Tier 2 for Patent Litigation.

IP Stars covers contentious and non-contentious IP work in more than 70 jurisdictions, making it one of...

Grünecker has been ranked as “Leading” (Tier 1) for Patent Prosecution in the new Leaders League table. In addition, the firm has been awarded the rating “Excellent” (Tier 2) in the areas of Patent Litigation, Trademark Prosecution and Trademark Litigation.

Leaders League is a media and rating agency for top executives at the international level...

In the 2022 edition of the Best Lawyers ranking, a total of 23 Grünecker patent attorneys and attorneys-at-law were recognised as leaders in their respective fields:

• Dr. Martin Ahr
• Dr. Bernd Allekotte
• Martin Aufenanger
• Bernd Bartelsen
• Dr. Elvira Bertram
• Rainer Bertram
• Dr. Martin Bierbaum
• Julia Bittner
• Dr. Nicola ...</li>

Grünecker was recognised as one of the leading patent law firms in Europe in the latest Financial Times ranking. In addition, Grünecker was awarded a gold tier ranking in the categories Electrical Engineering and Mechanical Engineering as well as a bronze tier ranking in the categories Biotechnology & Food and Chemistry & Pharmaceuticals.

The...

Grünecker has appointed two new Associate Partners, Dr. Stefano Marchini and Dr. Rainer Plaggenborg, at its Munich office. The firm thus strengthens its expertise in the fields of physics and life science/pharmaceuticals.

Dr. Marchini specialises in the field of physics. He focuses in particular on semiconductor technologies, mechanical...

As part of the initiative GRÜNECKER goes Green, GRÜNECKER is one of the first law firms in Germany to achieve certified climate neutrality. Therefore, the law firm worked with TÜV Süd, an independent service company, to determine its carbon footprint in accordance with the international climate neutrality standard PAS 2060 and drew up a management...

Grünecker has been among the top law firms in the field of trademarks for years and has now been able to secure this position again in the new edition of the IP Stars ranking.

IP Stars covers contentious and non-contentious IP work in more than 70 jurisdictions, making it one of the most comprehensive and widely respected IP guide in the legal...

Grünecker was again recognised as a gold tier firm in the new WTR 1000 ranking. The team “with more than 6,600 national trademarks and some 6,100-plus European trademarks under its care” counts among “largest and most formidable trademark prosecution practices in Germany”, according to the editors. Further key areas of expertise include “acting in...

Grünecker was again recognised as one of the leading law firms in Germany for patent prosecution. Regarding trademarks, Grünecker was able to improve further and now holds the top position in this area too. In addition, the firm was ranked in Tier 3 for patent litigation and unfair competition respectively.

"Grünecker impresses with one of the...

German legislation regarding UPC, which is required for UPC’s ratification, is on hold pending a decision from the German Federal Constitutional Court. We expected a decision on January 12, 2021, yet nothing  occurred. According to our sources, the Office of the Federal President has been informed by the Constitutional Court that a decision on the...

On November 26, 2020 German Parliament has passed the bill on the UPC – for the second time, yet this time with the needed 2/3-majority. The lower house is expected to pass the bill on December 18, 2020. Thereby, the path has cleared to the UPC opening its gates and unitary patents being available. Formal steps have yet to be taken. However, the...

From January 4, 2021, oral proceedings by videoconference in opposition proceedings will be the new normal at the European Patent Office (EPO). The EPO has extended the pilot project for oral proceedings by videoconference in opposition proceedings until 15 September 2021 (see here) and at the same time eliminated the requirement that all parties...

The Boards of Appeal of the European Patent Office (EPO) confirmed the revocation of European patent EP 2 771 468 of the Broad Institute relating to CRISPR gene editing technology (Clustered Regularly Interspaced Short Palindromic Repeats). The written decision T 844/18 is now available here. The case received wide attention because of its...

The current world leaders in data management for autonomous driving are the USA and especially China. This is the result of a current patent study by Grünecker. This study investigates the published patent families in four patent classifications.

In the first step of the study, Jens Koch and Victor Lopes Aguiar, patent attorneys at...

The European Patent Office has decided to postpone all oral proceedings in opposition scheduled to take place between now and 31 December 2020, where such proceedings either a) have not already been confirmed to take place by videoconference or b) will be held by videoconference with the parties' consent under the EPO’s pilot project. As of next...

Although the EPO, the EUIPO and the GPTO stay operational, they each have issued information about the impact of and measures relating to the corona virus. The EPO extends certain deadlines until May 4, 2020. At the GPTO and the EUIPO, the time limits are shifted to May 4, 2020.

Further details may be found here.

Only three weeks after UK’s withdrawal, the UPC suffered a hard setback by the German Constitutional Court: In its recently published decision dated 13 February 2020, the court declared the German Act of Accession to the UPCA (“Act”) to be void.

According to the Court’s statement, the lack of a two-thirds majority upon adoption by the German...

Information/Detail - Patentindex von Grünecker zur IAA 2019 jetzt erhältlich

Die Automobilhersteller dominieren Zukunftstechnologie Wasserstoff, die Zulieferer müssen aufholen. Das zeigt der Grünecker-Patentindex 2019. Die Experten für gewerblichen Rechtsschutz haben alle veröffentlichten Patentfamilien der vergangenen 20 Jahre zu...

Das Urteil des Oberlandesgerichts Düsseldorf (Az. I-2 U 31/16) im Verfahren Unwired Planet ./. Huawei zeigt, dass man jedenfalls vor den Düsseldorfer Gerichten (in Verfahren um Standardessentielle Patente (SEP)) auch hinsichtlich der Ansprüche auf Schadenersatz und Rechnungslegung mit einem FRAND-Einwand zu rechnen hat.

Nach der Entscheidung des...

In a very recent decision (rendered on March 26, 2019) X ZR 109/16 the German Federal Supreme Court held that the patentee is also entitled to claim the infringer’s profit for the period of time falling under the statute of limitations. Accordingly, the infringer needs to provide accounting as regards the generated profits and the costs accrued,...

In a much-noticed decision, a Board of Appeal of the European Patent Office (EPO) has decided last week at oral proceedings in case T 1063/18 that new Rule 28(2) EPC is in conflict with Article 53(b) EPC as interpreted by the Enlarged Board of Appeal in decisions G 2/12 and G 2/13 (Tomato II and Broccoli II). Rule 28(2) had only been recently...

With decision dated 30 September 2018 1 BvR 1783/17, the German Federal Constitutional Court ruled that a preliminary injunction, granted without a prior warning letter and hearing of the...

Does a cease and desist order comprise the obligation to request from customers to recall products brought into the market or, at least, request to no longer distribute them? The Patent Senate of the Court of Appeals Düsseldorf denies this. In its order of April 30, 2018, the Court of Appeals Düsseldorf ( docket no.: I-15 “ 9/18) decided to not...

In a judgment rendered on April 26, 2018 (docket no. 327 O 479/19, GRUR-Prax 2018, 285), the District Court Hamburg accepts for the area of patent law that exhibition of a product on a domestic trade fair usually constitutes an “offering” (this is also accepted by the Court of Appeals Düsseldorf, BeckRS 2014, 16067 - “sterile container”). The I....

Richtungswechsel - Nutzfahrzeuge fahren künftig elektrisch. Grünecker untersucht Patentfamilien weltweit. 

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Previously, the Enlarged Board had dealt with the admissibility of a “disclaimer” in decisions G1/03 (G2/03) and G2/10. G1/03 established certain criteria for the admissibility of an “undisclosed disclaimer”, the second decision G2/10 was concerned with a different type of “disclaimer”, namely “disclosed disclaimer”. According to G1/03 “undisclosed...

On November 29, 2017, the European Commission published its approach to Standard Essential Patents (COM(2017) 712 final). Two main objectives shall be achieved: Incentivizing the development and inclusion of top technologies in standards by preserving fair and adequate return for these contributions, and ensuring smooth and wide dissemination of...

By decision of July 18, 2017, the Higher Regional Court Düsseldorf elaborated on the duties of the SEP owner who wants to enforce its patent by means of a preliminary injunction (I-2 O 23/17): The SEP owner needs to submit a license offer on FRAND (Fair, Reasonable, and Non-Discriminatory) conditions immediately when noticing infringement. This...

BigBen France manufactures fittings which are compatible with a video game console of Nintendo, and delivers them it to customers in France, Belgium or Luxembourg. Nintendo´s video game console is protected by a community design. A BigBen advertisement depicted Nintendo´s video console. The European Court of Justice, upon referral by the Higher...

On June 1, 2017, the Higher Regional Court Munich (6 U 3973/16) has decided that the indication “patent pending” is understood by a relevant part of the consumers to say that the respective product is protected by a granted patent. If this is not the case because there is only a patent application in place, the indication “patent pending” is...

The Appeal Court had granted a claim for financial compensation to a co-owner of an invention who did not use the invention, against another co-owner who had used the invention to a considerable extent. In its reasoning, the Appeal Court was of the opinion that the reasons for not using the invention were irrelevant for the existence of such claim...

In its “Seal System” decision of May 16, 2017 (X ZR 120/15), the German Federal Supreme Court tightens the rules concerning obligations and liabilities of a foreign defendant: The claim for recall of patent infringing products from the channels of trade could also be directed against a foreign defendant. Moreover, the court held that such claim...

As reported here previously (see archive September 2016) in the decision of August 31, 2016 (3LiQ 1/16), the German Federal Patent Court has granted in preliminary injunction proceedings, to the benefit of the company group Merck, a compulsory license concerning the German part of the European Patent EP 1 422 218 (DE 602 42 459.3) of the Japanese...

The issue to be decided was whether the German figurative mark DE 30 2013 060 953, and the German figurative mark DE 30 2012 034 309 are infringed by the selling of certain pullovers. The figurative marks show one big triangle composed of four little triangles and a pattern of such big and little triangles respectively. The figurative marks and the...

The Administrative Council of the European Patent Organisation has decided on June 29, 2017 to amend the Regulations of the European Patent Convention to exclude plants and animals from patentability with effect from July 1, 2017, if they can exclusively be obtained by an essentially biological process. With this, the EPO follows — even though not...

By the judgment of December 15, 2016 (1 ZR 197/15 “ground dowels”), the German Federal Supreme Court has set aside a judgment of the Higher Regional Court of Düsseldorf and referred the case back to that Court. The plaintiff is manufacturing ground dowels, which are devices to be driven into the soil to fix a pillar or the like on it. A patent...

The nullity plaintiff has only attacked independent claim 1 of the patent, and not further sub-claims. In a nullity appeal proceeding, the patent owner made an attempt to defend the patent as granted, and in an auxiliary manner by including further features from granted sub-claims. The Supreme Court has decided hereto in a decision of March 1, 2017...

In order to eliminate the potential of Cryptosporidium oocysts infection of drinkable water, a patent claim suggested the use of ultraviolet light in certain doses, and within a certain wavelength range. The state of the art has shown in principle to treat water with ultraviolet light with a wavelength and in doses as claimed, however, for another...

The plaintiff and owner of a standard essential patent (SEP) has to substantiate that it has offered a license to the infringer which corresponds to the FRAND conditions during the infringement proceedings. Such offer may not unduly discriminate the defendant in comparison to already existent licensees. In litigation, the SEP owner has to reveal...

The plaintiff is owner of the trademark “MICRO COTTON” which essentially protects laundry and towels. The defendant sells towels with the indication “2 Microcotton Towels”. The District Court and the Higher Regional Court of Hamburg did not see this to be trademark infringing concluding that this is not the use as a trademark, but only a...

The bifurcation in German patent infringement trials (patent infringement proceedings on one hand and patent nullity action/opposition on the other) may lead to the situation that an infringement court renders a judgment in favor of the patentee – and it is only later that the patent is held invalid. So far, the procedural way of the deemed patent...

The plaintiff is owner of a patent which protects, inter alia, a method for the detection of nucleic acid molecules. Due to a genetic alteration the molecule serves as a marker in the diagnosis of leucaemic diseases. One of the accused parties has delivered from Germany – where patent protection exists – non-infringing samples containing nucleic...

In its “Rescue Drops” decision of September 19, 2016 (I ZB 34/15), the German Federal Supreme Court confirms the holding of the Higher Regional Court Munich that a cease and desist order, may contain the obligation to recall products even if this is not expressly stipulated in the judgment. The defendant had offered and advertised alcohol...

A Polish court referred the following question to the European Court of Justice: Is a Polish law that provides for payment of a double reasonable royalty fee in case of copyright infringement in compliance with EU law? The Polish court was of the opinion that this is questionable with regard to Article 13 of EU Directive 2004/48/EU...

The Enlarged Board of Appeal of the European Patent Office has now issued its long awaited decision in case G 1/15 (Partial Priority). The essential question before the Enlarged Board in this case was whether a claim that encompasses alternative embodiments by virtue of a generic expression, instead of individually listing them in the claim, may...

In a decision of June 2, 2016 (I ZR 75/15), the German Federal Supreme Court referred a case back to the Higher Regional Court of Munich. The plaintiff is the owner of several figurative trademarks for products for freshening the air, showing the silhouette of a fir tree, partly with the word “Wunderbaum” (“wonder-tree”) on it. The trademark owner...

In the long awaited decision X ZR 124/15, the German Federal Supreme Court (BGH) has decided that data obtained by a patent-protected diagnostic detection method, and the conclusions drawn therefrom, are not a product of a process in the sense of §9, Sentence 2, No.3 PatG. In the decided case, the patent protected a detection method for detecting...

In a decision of December 8, 2016, (T 2420/13) the Board of Appeal had to deal with the interpretation of Article 53 (c) EPC which provides an exception to patentability concerning methods for the therapeutic treatment of the human body. The examining division refused to grant a patent, claim 1 of which started with the wording: “use of an eyeglass...

In an order dated November 17, 2016 (I-15 U 66/15), the Higher Regional Court of Düsseldorf further specified the obligations of the parties to substantiate their case in disputes involving alleged infringement of standard essential patents. The Higher Regional Court of Düsseldorf is of the opinion that the rules and the procedure as laid down in...

On October 17, 2016, a Technical Board of Appeal has referred fundamental questions of law concerning the allowability of undisclosed disclaimers in a patent claim to the Enlarged Board of Appeal (T 0437/14). The case law of the Enlarged Board of Appeal has made a distinction between “disclosed disclaimers” and “undisclosed disclaimers” (G 1/03 and...

In a decision of August 23, 2016 (X ZR 76/14 “V-shaped guiding part”) the Supreme Court again had to deal with the issue of patent infringement under the doctrine of equivalence, and has set aside the decision of the Higher Regional Court of Düsseldorf and referred the case back to this instance. The Higher Regional Court of Düsseldorf was of the...

In a decision of September 9, 2016, (T 2170/10) the Board of Appeal found an appeal lodged by a patent applicant to be inadmissible. The Examining Division found a document (D1), to be novelty-destroying with regard to claim 1 of the application. In its grounds of appeal, the applicant basically repeated the arguments for why he believed that...

In a decision of June 21, 2016, (X ZR 41/15, “Security for legal costs”) the German Federal Supreme Court had to decide the question of whether a patent troll has to provide a security for legal costs in accordance with Article 110 German Code of Civil Procedure. The troll-company was an affiliate of a US-American mother company, having its...

In a decision of September 15, 2016 (C-484/14, Tobias McFadden vs. Sony Music Entertainment) the ECJ had to answer several questions concerning the liability of a commercial company which had offered to third parties a free-of-charge WLAN internet access. Third parties had misused this internet access by using a peer-to-peer filesharing system,...

Google, Apple und Tesla machen mit ihren Tests zum autonomen Fahren Schlagzeilen. Doch das meiste technische Know-How für selbstfahrende Autos hat die Automobilindustrie in Deutschland und Japan. Fünf der zehn weltweit wichtigsten Patentanmelder für Techniken rund um das autonome Fahren kommen aus Japan, vier aus Deutschland. Das zeigt der aktuelle...

In a decision of August 31, 2016 (3LiQ 1/16) the German Federal Patent Court has granted, to the benefit of the company group Merck, a compulsory license concerning the German part of the European Patent EP 1 422 218 (DE 602 42 459.3) of the Japanese pharmaceutical company Shionogi. After taking expert evidence, the board was convinced that a...

The Federal Trade Commission and the Department of Justice’s Anti-Trust Division are updating the anti-trust guidelines for the licensing of intellectual property. The actual draft can be seen here: ftc.gov and can be commented upon by interested parties until September 26, 2016. In the views of both agencies, the IP licensing guidelines are based...

In a decision on June 21, 2016 (X ZR 41/14 „Fahrzeugscheibe II“) the German Federal Supreme Court has accepted requests, which were directed to defend a patent in amended form and which were only filed in appeal proceedings, to be pertinent and admissible. The first instance, the German Federal Patent Court rendered a preliminary opinion before the...

In a decision of February 16, 2016, (X ZR 5/14 „Anrufroutingverfahren“) the German Federal Supreme Court has applied a high standard as to the requirement of an inventive step. The judgement of the German Federal Patent Court, which had maintained the patent, has been amended and the patent has been revoked. The closest prior art was a draft for a...

In a decision of June 2, 2016 (I ZR 226/14 „Kraftfahrzeugfelgen“) the German Federal Supreme Court had to deal with the limits of the repair privilege according to Article 110 of the Community Design Patent Regulation. The defendant had, by marketing aluminium rims, infringed several community design patents of the Porsche company. In its...

In a decision of June 14, 2016 (X ZR 29/15 „Pemetrexed“) the Federal Court of Justice (FCJ) set aside a decision of the Higher Regional Court of Duesseldorf (appeals court) and remitted the case back to the appeals court for further consideration. In particular, the question was whether the attacked embodiment pemetrexeddipotassium infringes the...

In a decision of July 21, 2016, (I ZB 52/15 „Sparkassen-Rot) the German Federal Supreme Court has set aside a decision of the German Federal Patent Court and confirmed the validity of the color mark red for the protected services. The decisive question was whether the color mark red can be seen as a trademark having a secondary meaning according to...

In the case C-567/14 the Court of Justice of the European Union had to decide the question of whether a licence agreement which provides for payment of a licence fee for a certain technology (enhancer derived from human cytomegalo-virus), even in the case that the underlying patents have been found to be invalid or not being used, violates European...

Since 2011, the state of Bavaria has been owner of the EU Trademark NEUSCHWANSTEIN, basically protecting merchandising articles and several services. The trademark was opposed before the EUIPO based on the reasoning that it is not distinctive and is descriptive with regard a geographic origin. The EUIPO maintained the trademark and the respective...

Laut einer Änderung der Gebührenordnung des EPA erhält der Anmelder ab dem 1. November 2016 eine Rückerstattung von 50% der Prüfungsgebühr, wenn die Patentanmeldung nach Beginn der Sachprüfung zurückgenommen wird, bevor die Frist für die Beantwortung des ersten Prüfungsbescheids der Prüfungsabteilung abgelaufen ist. Ab sofort gibt es eine...

In a just-published decision of October 20, 2015 (T 1673/11 ) a Board of Appeal had to decide about the admissibility of a change in the claim category. The granted claim was drafted in the category of a Swiss-type process claim “the use of human acid alpha glucosidase in the manufacture of a medicament …” whereas the claim as maintained by the...

The Board of Appeal decision T 0557/13 raised a number of questions to the Enlarged Board of Appeal. The key issue is that own parent or divisional applications of an applicant may be cited as state of the art in accordance with Article 54(3) EPC against an application or patent belonging to the same patent family which is not entitled to the...

In a decision of May 31, 2016, (6 U 55/16) the Higher Regional Court Karlsruhe has stopped the enforcement of a first instance decision which was based on a standard essential patent. A legal precondition hereto is that the decision of the first instance is presumably wrong. The District Court did not feel obliged to decide, in an infringement...

In a decision of March 18, 2016 (T-501/13) the General Court has set aside and referred back a decision of the Appeal Board of the European Union Intellectual Property Office (EUIPO). It was in dispute whether the community trademark WINNETOU has a descriptive character for all goods and services it was applied for, and consequently could not be...

In a decision which was announced on April 8, 2016 (5 U 156/14;), the Higher Regional Court Berlin had to decide on the action of the Federal Association of Consumer Protection Agencies against the company WhatsApp Inc. The Court ruled that the English terms of service must not be used as long as they are not available in the German language. The...

In a decision of May 20, 2016 (T 1435/11), the appeal of the patentee has been rejected by the Board of Appeal as being inadmissible. In the first instance proceedings before the Opposition Division, the patentee has defended his patent only in a restricted version. Together with the reasons of appeal, he has submitted a request to maintain the...

In a decision of December 15, 2015 (X ZR 111/13 „Telekommunikationsverbindung“) the German Federal Supreme Court has rejected auxiliary requests which the patentee has submitted in order to defend his patent as being late filed. Subject matter of these auxiliary requests were sub-claims which were referred back to the main claim. In the first...

In three decisions ((4b O 120/14), (4b O 122/14), (<a...

On February 17, 2016 (C-396/15 P), the European Court of Justice decided on an appeal against the decision of the General Court. The General Court found the figurative mark of Adidas similar to the later trademark application of Shoe Branding. Despite the differences in the number of stripes and their respective positions, the General Court found...

In a decision made on March 9, 2016 (12 O 151/15), the District Court of Düsseldorf found the position of the Consumer Advice Center of North Rhine-Westphalia in proceedings against the clothes dealer, Peek and Cloppenburg, legally correct. The integration alone of the “like” button on Peek and Cloppenburg’s website had the result that data on the...

The European Patent Office has announced that a complete secondary legal framework has been finalized which comprises implementing rules, budgetary and financial rules, the level of the renewal fees and the rules concerning the distributing of the renewal fees between the EPO and the Member States participating in the new Unitary Patent System....

In a decision of January 14, 2016 (T 2451/13 ) the standard of proof for the publication date of a document has been amended. For a brochure which is usually to be distributed in the course of business and which bears a copyright date the standard for the burden of proof is usually a balance of probability. This standard, however, is not applicable...

The plaintiff is the owner of the German trademark number 3020 1003 3190, showing the three dimensional shape of the chocolate bar “Bounty”. The defendant has – in a considerably different packaging – brought a similarly shaped chocolate bar to the market. The Cologne Higher Regional Court rejected the plaintiff’s action by reasoning that the...

Insolvency of a licensor can lead to considerable problems for the licensee. Often, the insolvency administrator can, in accordance with Article 103 of the German Insolvency Act, refuse to fulfill the license contract. The result can be that the licensee looses the license, and thereby its use right. In the decision of October 21, 2015, “ECOSIL” I...

On December 15, 2015 the European Parliament approved important reforms to the trademark system. The Office for Harmonization in the Internal Market will be renamed the “European Union Intellectual Property Office (EUIPO)”, and community trademarks will be known as “European Union trademarks”. There will be a reduction for renewal fees of community...

The Society for Musical Performing and Mechanical Reproduction Rights (GEMA) has sued Germany’s biggest telecommunication company, because it has rendered access for its customers to websites from which copyright protected music could be downloaded. On November 26, 2015, the German Federal Supreme Court has decided (I ZR 3/14 and I ZR 174/14) that...

In two decisions of November 3, 2015, (4a O 93/14 and 4a O 144/14); the district court in Düsseldorf...

In a decision of November 23rd, 2015 (I ZR “Sparkassen.Rot/Santander-Rot”) the German Federal Supreme Court has set aside the decision of the Higher Regional Court Hamburg and has referred the case back. The Plaintiff is the owner of the color mark Nr. 302 11 120 “Red (HKS 13)” which has been registered for having a well-known secondary meaning....

In a decision of October 21, 2015, (I ZR 51/12 – Davidoff Hot Water II) the German Federal Supreme Court had to deal with the case where obviously faked products, “Davidoff Hot Water”, have been distributed via eBay and the payment has been organized via the account of a bank. The bank has refused to reveal the identity of the account holder,...

According to Article 13 (1) of Regulation (EC) No. 469/2009 two dates have to be factored in when calculating the term of a SPC, namely the date the application for the basic patent was filed and the “date of the first market authorization” in the Community. While the meaning of the former date is unequivocally clear, the meaning of the latter date...

By judgment of September 23, 2015 (I ZR 105/14) the German Federal Supreme Court has decided on the dispute between the companies Haribo and Lindt concerning the alleged infringement of the trademark “Goldbären” (“golden bears”) by distributing a chocolate figure wrapped in a golden foil called “Lindt Teddy” and has denied an infringement with the...

In a decision of April 16, 2015 (I ZR 69/11) the German Federal Supreme Court had to deal with public libraries which provide in their rooms electronic reading facilities. Hereto books which are available in the inventory have been digitized to make them available at electronic reading facilities. At these reading facilities, no more specimens...

Die Ablösung des Benzin- und Dieselantriebs durch neuartige Antriebe bringt die Autoindustrie in eine massive Zwickmühle. Das zeigt der aktuelle Auto-Patentindex 2015 von Grünecker, einer der größten Patentkanzleien Europas mit Sitz in München.

Die Münchener Studie wertet veröffentlichte Patentanmeldungen aus.

Die wichtigsten Ergebnisse: ...

In a decision of June 2, 2015, (X ZR 103/13 „Kreuzgestänge“) the German Federal Supreme Court has made interesting statements regarding claim construction. The court dealing with infringement is not bound to the claim construction given by another court dealing with the patent validity, not even then if the latter court is the German Federal...

In a decision of June 9, 2015 (X ZR 51/13 „Einspritzventil“), the German Federal Supreme Court had to deal with belated defense arguments and means for attack. Hereto, the German Federal Supreme Court has decided that defense arguments or means for attack or a change of the action or the defense of a patent claim in a limited version, which have...

The concept of so-called “poisonous divisionals” and “toxic priorities” has been troubling professionals and patent applicants/owners for quite some time now and many questions are still unanswered. These terms refer to cases where a European patent application of the same patent family is held against another European application or patent as...

According to the court, it does not constitute an abuse of a dominant position in the market (Art. 102 TFEU) if the patentee, based on a standard-essential patent, brings an action for rendering of accounts or an award of damages. However, if the patentee sues for an injunction or a recall of products, it has to alert the alleged infringer of the...

After first oral proceedings, the examining division was willing to grant a patent on the basis of a certain auxiliary request. The applicant, however, filed a new claim and requested second oral proceedings. The examining division did not open second oral proceedings, but rejected the application. A Board of Appeal (T 1775/12) decided on June 15,...

The Intellectual Asset Management (IAM) Magazine has conducted a comprehensive survey to find out the readers’ opinions on issues in the global IP market. The EPO was found to be the leading IP office in the world for both quality of patents issued and the level of service offered.

In a decision of February 26, 2015 (T 1808/13), the EPO had to deal with embryonic stem cells as well as a method for producing neuronal precursor cells. To this problem, the Enlarged Board of Appeal (G2/06) has already decided that the EPC does not allow patenting of products which at the application date could only be produced by a method that...

In a decision of March 24, 2015 (G 0003/14), the Enlarged Board of Appeal clarified under which conditions clarity objections (Art. 84 EPC) can be raised in opposition proceedings. An alleged lack of clarity is not a ground of opposition but, amendments made to a claim during opposition may allow clarity objections. In the past, some Boards of...

In a decision of February 17, 2015 “Wundbehandlungsvorrichtung” (X ZR 161/12) the German Federal Supreme Court had to deal with the German part of a European Patent containing a limiting feature which was not disclosed in the original application. This situation results according to the case law of the European Patent Office regularly in a complete...

In a decision of February 3, 2015 (X ZR 69/13 “Audiosignalcodierung”), the German Federal Supreme Court has treated interesting questions regarding contributory infringement. The patent in suit concerns a method for transmission of digitized sound signals and contains a number of decoding steps. The German Federal Supreme Court concluded that...

The CJEU has scheduled its decisions on the Spanish complaints against the UPC package for May 5, 2015. Despite last minute open letter signed by law professors reiterating arguments brought forward in the proceedings it is widely expected that the CJEU will follow the opinion of the advocate general and dismiss Spain’s complaints.

In a long awaited landmark decision in consolidated referrals G2/12 and G2/13, commonly known as Tomato II and Broccoli II, the Enlarged Board of Appeal of the European Patent Office on March 26, 2015 once again commented on the patentability of plants. Both referrals were concerned with the question of whether the exclusion of essentially...

Finally, the EPO has now provided first proposals on the level of renewal fees to be paid for a unitary patent. EPO president Benoît Batistelli submitted a report to the Select Committee of the Administrative Council containing two alternative fee structures.

Further details may be found here.

In a decision T2130/11 of December 2, 2014 a Board of Appeal decided that the requirement of Article 84 EPC concerning clarity is equally applicable to a disclaimer as to any other feature of a claim. This requirement may lead to a conflict with the principle laid down in the Enlarged Board of Appeal decision G1/03 saying that a disclaimer should...

In the case T0557/13, the minutes of the oral proceedings of December 17, 2014 reveal that the Board of Appeal will refer questions to the Enlarged Board of Appeal. The written reasons and the questions are not yet available. However, that they relate to the problem of so-called poisonous priorities or poisonous divisional applications. In very...

In a decision dated January 13, 2015 (X ZR 41/13) “Quetiapin” the German Federal Supreme Court deals with the “problem” underlying an invention. According to the case law of the German Federal Supreme Court, one does not necessarily have to rely on the “problem” as it is outlined in the patent description when examining an invention. Rather, it has...

In a decision pronounced on January 13, 2015 (X ZR 81/13 “Cooking Vessel”) the German Federal Supreme Court defines its approach to the Doctrine of Equivalence more precisely. A judgment of the Higher Regional Court of Munich, which found infringement, has been cancelled. A solution, which does not literally infringe, can be covered by a patent...

According to an agreement between the European Patent Organization and Morocco which enters into force on March 1, 2015, it will be possible to validate European Patent applications and patents in Morocco as of that date. However, this option is only available for European or International applications filed on or after March 1, 2015 and not for...

In a decision of October 14, 2014 (X ZR 35/11) („Zugriffsrechte“), the German Federal Supreme Court has interpreted a patent claim broader than the German Federal Patent Court. As a consequence, the patent was found to be not inventive over the state of the art. The head note of the decision reads: an interpretation of a patent claim having the...

On January 20, 2015, the Council of Ministers of the European Union has decided that the Unified Patent Court of the European Union shall have a local chamber in Austria. This local chamber shall be located in the building of the Austrian Patent Office. The Unified Patent Court of the European Union has a central chamber having a main seat in Paris...

In a decision of December 2, 2014 („Sitzplatznummerierungseinrichtung“ X ZB 1/13), the German Federal Supreme Court has confirmed its case law saying that German Courts have to consider parallel decisions of the European Patent Office and Courts of Member States of the European Patent Convention. A non-compliance with this requirement can be a...

At the EPO, the issue is discussed that there is no strict separation between the administration of the Office and the jurisdiction. The enlarged Board of Appeal has recently in a landmark decision (R 19/12) objected that a presiding judge at the Board of Appeal was at the same time a high-ranking member of the administration. One of the discussed...

On November 20, 2014, the Advocate General has presented his pleading in a case which was referred to the Court of Justice of the European Union by the District Court of Düsseldorf. The question was what the holder of a standard essential patent has to do before asking for an injunction against the infringer. It is clear that the patent holder has...

In a decision of July 21, 2014 the District Court of Amsterdam adopted the principles as laid down in the UsedSoft-decision (C-128/11) of the European Court of Justice and concluded that e-Books are equivalent to paper books. Any resale is allowed under the principle of exhaustion.

On November 18, 2014 the Advocate General suggested in his pleading before the European Court of Justice that the action of Spain concerning the EU-Regulation 1257/2012 (C-146/13 and C-147/13) concerning the Unitary Patent package should be rejected. The action of Spain was primarily motivated by the fact that the Unitary Patent system leads to...

On the basis of bilateral agreements a “Patent Prosecution Highway” pilot program with Canada, Mexico, and Singapore shall start in 2015. Patent claims which have been found allowable by the EPO or from the patent offices of one of the respective states shall be granted quicker by the partner patent office. Already existing work results from the...

In a decision of September 26, 2014 (T 1888/11) a Board of Appeal had to decide about requests which have not been filed earlier than in the Oral Hearing. The patentee has made an attempt with these requests to overcome objections due to undue broadening. The objection of undue broadening was not entirely new in the proceeding. However, the Board...

In September 2014, the Preparatory Committee has updated its Roadmap () giving an overview over the already work completed, the status of several drafts among others concerning the Rules of Procedure, the Court fees and the Litigation Certificate for patent attorneys, the financial aspects, the facilities of the Court as well as human resources and...

In a decision of September 18, 2014 (I ZR 228/12 “Yellow Dictionaries”) the German Federal Supreme Court concluded that a defendant who distributed language learning software for 33 languages in a yellow packaging together with its own logo infringes the color mark “YELLOW” for bilingual dictionaries in print form of the plaintiff. The color...

In a decision of May 6, 2014 (X ZR 36/13) the German Federal Supreme Court concluded that the Higher Regional Court has not properly dealt with the question of patent infringement under the doctrine of equivalence. This line of argumentation, however, was brought forward by the plaintiff in the first and second instance. The German Federal Supreme...

In a decision from July 15, 2014 (T 0036/12) a Board of Appeal had to deal with a main request and an auxiliary request having a scope broader than those considered in the appealed decision. The Board of Appeal did not accept these claim requests based on the argument that they have not been the object of the decision under appeal, since during the...

In a decision of June 25, 2014 (X ZR 72/13) the German Federal Supreme Court confirmed its view that the mere transit of patent infringing items does not constitute patent infringement because it is not an import for marketing purposes in the Federal Republic of Germany. Even questions of import taxation are of no relevance in that context. A...

In a decision of July 10, 2014 (C – 421/13) the European Court of Justice had to deal with a three-dimensional mark showing the Apple “flagship store”. The background was that the German Federal Patent Court has addressed several questions in this context to the European Court of Justice. The critical issue was for which kind of services the...

In a decision of May 15, 2014, the High Court of Justice has granted a DNI not only with effect to the UK, but also with effect to France, Italy and Spain. The Court concluded that the law applicable to the question whether the plaintiff is entitled to a DNI is English law. However, even if French, Italian and Spanish law is applicable, the Court...

In a decision of April 8, 2014 (T 1142/12), the Board of Appeal ruled that the EPO is organized whereby in the case that the Examining Division is located in The Hague, oral proceedings are to be held in The Hague and when the Examining Division is located in Munich, oral proceedings are to be held in Munich. This rule is based on a management...

In a decision of April 1, 2014, the German Federal Supreme Court has revoked a first instance decision of the German Federal Patent Court in an invalidity case (X ZR 31/11). Crucial was the interpretation of a claim concerning a “tyre removal machine … comprising a device in accordance with claims 1 to 12”. The first instance has come to the...

In a decision of November 14, 2013 which has just been published, a Board of Appeal of the European Patent Office (J 0014/11) had to decide on an appeal against the decision of an Examining Division to continue the patent prosecution despite the fact that there was at a German Court an action pending concerning the inventorship and the right to the...

In two decisions of April 29, 2014, the European Commission has clarified its understanding of how standard essential patents shall be used within the European Community by complying with EU anti-trust rules. In one case(Samsung), the Commission has accepted legally binding commitments on standard essential patents to the extent that Samsung will...

In a decision of March 27, 2014 (C-314/12), the European Court of Justice had to decide on the admissibility of specific court orders rendered by national courts against Internet access providers. National courts are allowed to grant an injunction prohibiting an Internet access provider from allowing its customers access to a website placing...

In a decision of November 26, 2013 (X ZR 3/13) the German Federal Supreme Court had to decide about the statute of limitation regarding claims raised by an employed inventor. According to the German Employees Inventor Act the inventor and the employer have the option to contact an arbitration body established at the German Patent and Trademark...

The four patent chambers in the European Unified Patent System in Germany will be in Düsseldorf, Mannheim, Munich and Hamburg. These Unified Patent Courts will start their work in Germany together with the implementation of the EU-Patent. The member states of the European Union can build local or regional chambers usually one chamber per member...

In the decision of February 13, 2014 (C-466/12) the European Court of Justice came to the conclusion that the owner of an Internet page is allowed to refer to copyright protected works which are accessible through a third party’s Internet page via a hyperlink and without the permission of the copyright owner. The European Court of Justice stated in...

In a decision of January 22, 2014 (I ZR 164/12 the First Division of the German Federal Supreme Court which is competent for unfair competition has rendered a judgement on “Typo Domain Names”. The plaintiff provides weather forecast services under the domain name “www.wetteronline.de”. The defendant offers private health insurances under the domain...

In a decision of January 16, 2014 the 5th Chamber of the General Court of the European Union has rejected in the legal matter T-433/12 the action of a trademark applicant for registration of a position mark for a shining or dim round metal button in the ear of a plush toy. According to the Court this trademark lacks distinction. First of all, this...

The EPO will be entrusted by EU Member States with the administration of procedures in accordance with Article 9.1 of the EU Regulation No. 1257/2012. Hereto the Committee has finished its first reading of the draft rules relating to the unitary patent protection. These draft rules deal with the procedures that will be administered by the EPO....

In a decision of November 26, 2013 a Technical Board of Appeal (T 0099/10) has shifted the burden of proof concerning alleged effects of an invention to the patentee. The Board held that if a technical problem set out in a patent is considered to be credibly solved by a claimed invention and if there are no reasons to assume the contrary, it is...

On September 24, 2013, the German Federal Supreme Court has, in its decision "Fettsäuren" (X ZR 40/12) reversed a decision of the German Federal Patent Court and revoked a patent in its entirety. The Supreme Court has confirmed its case law according to which the disclosed discovery of the biological reasons of the effect on which a pharmaceutical...

In a Decision of November 13, 2013 (I ZR 143/12 "Geburtstagszug") the Supreme Court has revised its longstanding case law: Contrary to earlier case law, the standard for accepting copyright protection for applied arts is the same as that for copyright protection for fine arts. The previous case law, according to which the standard regarding...

Grünecker receives the JUVE award as “law firm of the year for IP”. The editorial team of the specialist journal JUVE distinguishes law firms which, based on their operations and market position, are seen to be especially dynamic.

The JUVE editorial staff points out that Grünecker has excelled in this respect in all areas of expertise under...

In its October meeting, the Administrative Council of the European Patent Organization decided to repeal the restrictions on filing divisional applications which were introduced in 2010. As of April 1, 2014, it will again be possible to file a divisional application based on any pending patent application. The 24-month time limits for the filing of...

As of January 2014, a comprehensive IP5 Patent Prosecution Highway Pilot Programme of the European Patent Office (EPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO) shall be ...

In a decision of August 6, 2013, “Ink-jet Printer” (X ZB 2/12), the German Federal Supreme Court has dealt with the consequences of an undue broadening of a utility model claim. As long as not “something entirely different” has been claimed and as long as the originally claimed subject matter only has been limited, it is not necessary to invalidate...

In a Decision of May 13, 2013 (R 0015/11), the Enlarged Board of Appeal saw the right to be heard in the sense of Article 113(1) EPC to be violated and has sent the case back. Moreover, a request was made that the members of the Board of Appeal, who participated in this decision under review, be replaced. However, this request was rejected. In the...

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Die weltweite Forschung für Elektro-Autos erreicht einen neuen Höhepunkt. 2012 wurden mit gut 6.000 Patentanmeldungen so viele Innovationen für Elektro-Autos geschützt wie noch nie. Das sind mehr als doppelt so viele Patentanmeldungen wie für Hybrid-Fahrzeuge.

Die Kerntechnologien des E-Autos kommen dabei jedoch immer...

In February of 2013, 24 Member States of the European Union have signed an agreement concerning the Unified Patent Court. It has to be ratified by at least 13 Member States, amongst them France, Germany and the United Kingdom. Now, Austria took that step as a first Member State and has deposited the ratification instruments in Brussels. Since the...

In a decision of July 17, 2013 (UsedSoft II, I ZR 129/08) the German Federal Supreme Court has clarified the rules regarding the exhaustion of distribution rights of a copyright owner: The producer of computer software has stipulated in the license agreements with his customers that the right to use the computer program cannot be transferred. The...

In a Decision of July 9, 2013 (T 00 83/05; G 2/13) the Technical Board of Appeal has referred several questions concerning the exclusion of essentially biological processes from patent protection to the enlarged Board of Appeal, namely: whether the exclusion of essentially biological processes for the production of plants in Article 53 b) EPC can...

As of January 1, 2014, the new Regulation (EU) No. 608/2013 concerning customs enforcement of intellectual property rights will be applicable and repeal Council Regulation (EC) No. 1383/2003. The new regulation will not apply to goods carried by passengers in their personal luggage provided that those goods are for their own personal use and there...

In a decision of May 7, 2013 (“Fräsverfahren”; X ZR 69/11) the German Federal Supreme Court has annihilated the decision of the Higher Regional Court of Munich and referred the case back. A contributory infringement was committed by offering means for the implementation of the invention. However, the patentee has had no evidence that a direct...

In a decision of February 19, 2013 (X ZR 70/12) the German Federal Supreme Court had to decide on the following case: a patentee has filed a patent infringement action against an infringer and thereafter granted an exclusive license regarding the patent in suit to a third party. Then even the exclusive licensee has filed a patent infringement...

In a decision of April 16, 2013 (X ZR 49/12) the German Federal Supreme Court came to the conclusion that the transfer of the right to claim a priority of a German patent application is not subject of a form requirement even if the priority shall be claimed for the benefit of a European patent application. In this case the validity of the...

The European Commission has sent to companies "objections on potential misuse of mobile phone standard essential patents”. In principle an infringer of standard essential patents can defend himself with the argument that he is willing to enter into a license agreement under "Fair Reasonable and Non-Discriminatory (FRAND)" conditions. However,...

In two proceedings 33 W (PAT) 103/9 and 33 W (PAT) 33/12 (decision) the validity of the color mark “Red”, which has been registered as a color since 2007 on behalf of German Savings Bank and Giro Association and which has been used starting from the last century, namely during the 1960s and 1970s, is at issue. Two banks, which are competitors, have...

The council of the European Union has allowed in total 25 European member states to create a Unitary Patent System based on the so-called enhanced cooperation which is possible under the TFEU. The attempt of Italy and Spain to challenge this decision has now been rejected by the European Court of Justice in a decision of April 16, 2013 Cases...

In a decision of March 7, 2013 (T 0494/11) a board of appeal of the EPO has not admitted the amendment of a parties case during appeal proceedings. An opponent has introduced one month before the scheduled oral proceedings a patent application to show that the claimed prior-ity was not the first application in the sense of Article 87 (1) EPC....

In a decision of March 21, 2013 (4b O 104/12), the District Court of Dusseldorf has referred several questions relating to standard essential patents to the European Court of Justice. The background is that the German Federal Supreme Court has defined in a landmark decision (KZR 39/6) “Orange – Book – Standard” rather harsh pre-conditions, under...

On February 19, 2013, the International Agreement for Establishing a Unified Patent Court was signed. To come into force, the Unified Patent Court Agreement must be ratified by at least 13 of the contracting European Union member states including France, Germany and the United Kingdom. The Court of the First Instance has a central division which...

At the German Federal Patent Court, different chambers have rendered in the past contradicting decisions as to the question of reimbursable costs in patent nullity proceedings. Now, the German Federal Supreme Court has clarified this issue in two decisions dated December 18, 2012 (X ZB 6/12 and X ZB 11/12): If there is a parallel patent...

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Egal, ob Schuhe, Kleidung oder Sportgeräte: Nike meldet von den fünf Top-Sportartikelherstellern mit Abstand die meisten europäischen Patente an. Das zeigt eine aktuelle Untersuchung der renommierten Patent- und Rechtsanwaltskanzlei Grünecker anlässlich der Messe ISPO in München. Allein für Schuhe hat Nike in den vergangenen...

In a decision of October 25, 2012, (C-133/11), the European Court of Justice has answered questions of the German Federal Supreme Court regarding the international jurisdiction for negative declaratory actions: the place of jurisdiction in case of a tortuous act is defined by that place where the damaging event has occurred or is likely to occur....

In a decision of December 28, 2012 (33 O 803/11) Gold Bears, the District Court of Cologne concluded that marketing a chocolate teddy bear wrapped in gold foil infringes the renowned word-mark “Gold Bears” of the plaintiff. The decision is of importance because so far there is no Supreme Court case law regarding the infringement of a word-mark ...

On December 10 and 11, 2012, the European Competitiveness Council as well as the European Parliament voted in favour of the current unitary patent package. The following day, the Advocate General proposed that the Court of Justice of the EU should reject the corresponding pleas put forward by Spain and Italy and, consequently, dismiss both actions....

In a decision of October 23, 2012 (X ZR 120/11) the German Federal Supreme Court decided that a substance composition which is available on the market is not new if it can be analyzed by the skilled person and reproduced without undue effort. If the composition is complex and cannot be easily identified, it is nevertheless novelty destroying if the...

In a decision of December 13, 2012 (I ZR 217/10), the German Federal Supreme Court did not see it as a trademark infringement that a competitor has used the trademark “MOST” as a keyword. According to the German Federal Supreme Court, there is in general no confusion about the origin of goods if, after using a keyword, the advertisement which pops...

In a decision of June 15, 2012, (R 0021/11), the Enlarged Board of Appeal has referred a case back to the Board of Appeal due to deficiencies of the proceedings. In the objected proceedings, an expert opinion has not been considered and a request for admission of the expert opinion to the proceedings has been left unanswered. The deficiency in the...

In a decision of November 27, 2012 (X ZR 58/07) the German Federal Supreme Court decided about a patent concerning neural precursor cells and their therapeutic use to treat neural defects in man and animals. Upon reference to the European Court of Justice, the latter has decided (C-34/10-Brüstle/Greenpeace) that any human ovum as of its...

The decision of August 28, 2012 (X ZR 99/11) concerns the question to what extent new evidence and new lines of argumentations are admissible during appeal proceedings in patent nullity matters before the German Federal Supreme Court. Hereto the Court concluded that submitting for the first time in appeal proceedings, an expert opinion is...

In a decision of August 21, 2012, the German Federal Supreme Court (X ZR 33/10) decided that video data sets representing a sequence of video pictures can be a product protected under Article 9, sentence 2, number 3 German Patent Act, as an item directly obtained by a patent protected method. Because this sequence of data is to be regarded as a...

In the decision of July 17, 2012 (X ZR 97/11 „Palettenbehälter II“)

the German Federal Supreme Court has defined the patent-free exchange of parts versus a patent infringing new-manufacture. A decisive criterion is whether the exchange is according to the customary usage in the trade is a matter of usual maintenance, which does not change the...

In the Decision of July 17, 2012 (X ZR 77/11 „Verdichtungsvorrichtung“)

the German Federal Supreme Court had to decide under which conditions after a final judgment in the patent nullity proceedings, a patent infringement case can be stayed due to new nullity proceedings. The German Federal Supreme Court concluded that further staying the...

In a decision of July 19, 2012 (I ZR 70/10) the German Federal Supreme Court came to the conclusion that the termination of a main licence, for example due to the non payment of licence fees, does not result in the termination of a sub licence which has been granted by the main licensee. According to the German Federal Supreme Court the interests...

In a decision of April 19, 2012 (I ZB 80/11) the German Federal Supreme Court concluded that copy right owners have a right to information concerning name and address of the user of an IP-address which has contributed in an unauthorized manner to an online file-sharing system by providing a copyright protected opus. The right to information does...

The German Federal Supreme Court has referred questions about the interpretation of the Directive on the legal protection on computer programs to the European Court of Justice. Hereto the Court came to the conclusion that the right to distribute a copy of the program is exhausted with the first sale. It does not matter whether a data storage medium...

On June 29, 2012, the Council of Europe has agreed that the main seat of the European Patent Court shall be in Paris. In addition to this main seat, the Court shall have two branches, one in London for biotech and pharmaceutical patents and one in Munich for mechanical engineering patents and administration. The European Parliament, however, has...

In a decision of May 15, 2012, the German Federal Supreme Court adopted a rather high standard for inventiveness and came to another conclusion than a Dutch court. The German Federal Supreme Court confirmed the decision of the German Federal Patent Court revoking a patent for lack of inventiveness. According to the German Federal Supreme Court it...

In a decision of May 31, 2012, a Board of Appeal of the European Patent Office has referred a case to the Enlarged Board of Appeal in order to obtain clarification about several questions of law. The patent claims at issue are directed to transgenic plants which are not directly excluded from patentability under Article 53(b) EPC. The Enlarged...

In a decision of March 12, 2012 a Board of Appeal of the European Patent Office decided on a test case under which conditions a document stored on the World Wide Web is publically available and forms state of the art. The board of appeal required “direct and unambiguous access” to the means of disclosure as opposed to a mere theoretical possibility...

In a now published decision of September 22, 2011 a Board of Appeal of the European Patent Office relied on the rule that the statement of grounds of appeal must contain the party’s complete case. It should set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed. It should specify expressly all...

In a decision of April 20, 2012 the District Court Hamburg concluded that the video platform YouTube is only liable for copyright infringements committed by its users if certain control obligations have been violated. If YouTube has been informed about a copyright infringement an immediate reaction, namely blocking the video in question is...

In a decision of March 8, 2012 the German Federal Supreme Court concluded that in international trademark infringement cases the jurisdiction of German courts is only given if there is a relevant infringement within Germany. This requires a “commercial effect” in Germany. It has to be determined whether the infringement can be avoided which is...

In a decision of September 29, 2011, the Enlarged Board of Appeal has accepted a request for review of a decision of the Technical Board of Appeal according to Article 112a EPC and has referred the case back to the Technical Board of Appeal. The Technical Board of Appeal has at the same time decided about novelty and inventive step without...

In two parallel decisions of March 15, 2012 (I ZR 52/10 and I ZR 137/10), the German Federal Supreme Court concluded that in principle the defendant has the burden of proof that the accused products are original products and trademark rights exhausted. However, the trademark owner who alleges a product counterfeit has to substantiate some hints and...

On February 27, 2012, the Higher Regional Court Karlsruhe has rendered a decision defining the requirements of a successful compulsory license defense in a precise manner. The plaintiff tried to enforce a first instance judgement which found infringement of patents covering the GPRS (General Packet Radio Service) standard. The defendant offered the...

If the licensor of intellectual property rights undergoes insolvency proceedings, the consequence can be that the licensee loses its license rights. A draft of the German Federal Ministry of Justice suggests amending that in that the license rights of the licensee remain – at least partly - in force. The licensee can claim that a license contract...

The EU-Commission has rendered a road-map to amend the enforcement directive. IP owners, specifically small and medium sized companies, shall be in a better position to fight against infringements on the Internet. This includes the right to obtain relevant data from third-parties, mainly providers, as well as quick proceedings to stop the...

In a decision, the German Federal Supreme Court has confirmed its case law according to which in a patent invalidity proceeding changing of a device claim into a use claim is admissible. It is mandatory that the patentee who has obtained during patent prosecution a too broad device claim gets a fair protection if his inventive contribution is...

On October 18, 2011, the ECJ rendered its decision in the matter C-34/10, the so-called “Brüstle” patent, in which the Bonn, Germany-based stem cell researcher Oliver Brüstle claimed cells which had been isolated from a human embryo. As part of its decision, the ECJ had to interpret the term “embryo”. According to the European Biotechnology...

In a decision the German Federal Supreme Court has rendered further guidelines regarding the doctrine of equivalence. If a technical solution is disclosed or rendered obvious in a patent description, but, for whatever reasons, not claimed, this solution in general does neither constitute literal patent infringement nor infringement under the...

An original equipment manufacturer has marked packages of ink cartridges with different signs like a teddy bear, a duck or an umbrella. The purpose was to facilitate, for the user, the classification of a certain ink cartridge to a certain printer. The original equipment manufacturer filed suit on the basis of unfair competition allegations against...

In a decision the European Court of Justice decided on using third parties’ trademarks in an internet search engine (“Keyword Advertising”) under the aspect of trademark infringement. The Court sees an infringement if that use of the keyword is liable to have an adverse effect on one of the functions of the trademark, such as indicating the origin,...

The Enlarged Board of Appeal of the European Patent Office has been asked whether the introduction of a disclaimer into a patent claim can constitute an undue broadening of that claim. Now, the Enlarged Board of Appeal has rendered some guidelines: The introduction of the disclaimer constitutes an undue broadening if the subject matter – after...

In an important patent case the plaintiff has announced to the Court that the litigation value is € 5 million which was not disputed by the defendant. Court fees have been paid on that basis. The District Court of Düsseldorf has – on its own motion – increased the litigation value to € 30 million and claimed additional court fees calculated on the...

The European Court of Justice concludes that platforms can be liable for trademark infringements if they were aware or should have been aware of trademark infringements of their customers and did not immediately stop that infringement. Moreover, it must be possible to identify a commercial trademark infringer. European law requires that the member...

A natural person whose name is protected under the national law of a European Union member state is, according to the European Court of Justice, entitled to prevent the registration of that name as the trademark by a third party. This also applies in case that the name of the natural person is known by the public and has already been protected by...

The German Federal Supreme Court has presented the question to the European Court of Justice whether according to European Law the foreign jurisdiction in case of a tortious act is also given for a negative declaratory action. The German Federal Supreme Court is of the opinion that this is the case. There are, however, contradicting decisions from...

The Higher Regional Court Frankfurt concluded that after patent infringement the complete infringers profit can only be claimed in exceptional cases. The complete infringers profit can only be attributed to the patent infringement if the subject matter of the protected invention is a completely new item. In the usual case the subject matter of the...

The Higher Regional Court of Düsseldorf concluded that manufactured goods may only be advertised as “Made in Germany” if all essential manufacturing steps took place in Germany. The decisive factor is whether, in the view of the addressed consumers, the essential value-providing features of the product were generated in Germany. If this is not the...

According to the draft, the twelve member states which intend to participate in this “enhanced cooperation” (Denmark, Germany, Estonia, Finland, France, Lithuania, Luxembourg, the Netherlands, Poland, Slovenia, Sweden and the United Kingdome) can file a request with the European Patent Office for a “uniform effect” of European Patents. Patents...

In a decision of April 14th 2011, the Federal Supreme Court came to the conclusion that the use of the figurative mark “VW” by an independent garage is infringing that trademark. The use of that figurative mark was not necessary to announce the subject matter of the services provided by that garage. Rather, the use of the word mark only or the...

European Court of Justice renders negative opinion on planned European Patent Court systemIn its opinion of March 8, 2011, the European Court of Justice concluded that the planned system for a European Patent Court is not in conformity with European law. This Court could – through its decisions – violate standing European law, and this would not...

In its report on the Enforcement Directive, the European Commission came to the conclusion that intellectual property infringements committed via the internet must be more effectively prevented. This concerns above all the information claims against providers and damage claims on the basis of infringer’s profits.

A company running an internet sales platform is not obligated to monitor offers mentioning third party trademarks by means of a manual visual check whether or not the offered products deviate from original products. The company is furthermore not liable under Unfair Competition Law if the offers refer to third party trademarks with formulations...

The display of topographic information by means of a technical device is not excluded from patentability if at least one aspect of the teaching protected by the patent claim solves a technical problem. During examination of the inventive step, only those features which solve or at least have an influence on the solution of a technical problem with...

The European Patent Convention excludes essentially biological processes for the production of plants (or animals) from patentability. The Enlarged Board of Appeal of the European Patent Office concluded that a process for the production of plants involving sexually crossing whole plant genomes and the subsequent selection of plants falls under...

As of January 1, 2011 and concerning applications which are filed on or after that date, it will no longer be necessary to file a copy of the search results referred to in Rule 141(1) EPC provided that the priority of the first filing made in one of the following states is claimed: Japan, United Kingdom and United States of America.

The Court of Appeal of The Hague has referred several questions to the European Court of Justice concerning the issue whether the valid use of a trademark within one member state only is sufficient to maintain the rights to a Community trademark.

Several EU member states, including Germany, have planned to closely cooperate in a way which is opened by the Lisbon Treaty: The plan is to introduce a EU patent which is only valid in specific EU member states excluding Spain, Italy and Poland. However, this plan is independent from the European Patent Court system which is still under evaluation...

A Board of Appeal of the European Patent Office has referred a question of law to the Enlarged Board of Appeal: Does a disclaimer infringe Art. 123(2) EPC if its subject matter was disclosed only as an embodiment of the invention in the application as filed? Regarding this question, different Board of Appeal decisions are in existence.

The German Federal Supreme Court has confirmed its case law by deciding that a limitation of a patent claim which is not disclosed in the original application can remain in the patent claim. A precondition, however, is that the respective feature only puts a technical teaching in a more concrete form, whereby this technical teaching has to be...

The German Federal Supreme Court came to the conclusion that a television company which infringes a third party’s rights by an unallowed broadcasting of film sequences has to pay a part of the earnings for the commercials run during the news program as infringer’s profits.

The Advocate General of the European Court of Justice, Juliane Kokott, concluded in an opinion submitted to the Court that the envisaged agreement to create a unified patent litigation system is, in its present form, incompatible with European treaties. If the Court follows this opinion, the draft agreement as it now stands cannot be implemented.

The European Court of Justice denied trademark protection for a three-dimensional mark showing upper and lower surfaces of a LEGO toy cuboid. The Court’s main argument is that the trademark shows only the form of the product, which form is mandatory to obtain a technical result. The Court concluded that according to European trademark law, it is...

In Switzerland, a new Federal Patent Court is planned which is to have exclusive jurisdiction over both, validity and infringement of patents which are valid in Switzerland. Both aspects can be dealt with in one and the same procedure. The language of the proceedings will be German, French, Italian or even, if the parties agree, English. Judgments...

A company that uses a term (“power ball”) which can be confused with the trademark of a third party (“POWER BALL”) in a product description on its website in a specific line which it knows will be searched by internet search engines is held to be infringing the trademark if the search engine shows the terms together as hits. It suffices to be...

The two recent decisions of the Enlarged Board of Appeal G2/08 and G1/07 differ largely in terms of their clarity and extent of legal certainty conveyed. While the decision on dosage regimens G2/08 is very clear, well reasoned and consistent, despite its exhaustive length the decision G1/07 on treatments by surgery does not give the practitioner...

According to a proposal of the EU Commission, the application of a future EU patent at the EPO could be filed in any language before being translated into one of the three official languages of the EPO (English, French or German). The applicant would be required to provide a translation of the claims into the remaining two official EPO languages....

In its decision C428/08 Monsanto Technology LLC vs. Cefetra BV and others, the EU Court of Justice (EuGH) decided on the scope of protection of a patent, EP 456090 B2, protecting i.a. a DNA sequence for an enzyme involved in developing herbicide resistance in plants. The patentee tried to stop importation of soy meal in which the gene was...

In a decision dated June 14, 2010, the Higher Regional Court of Düsseldorf came to the conclusion that domain names which lead to an active homepage used in commerce have not only an address function, but also the trademark function to designate goods and services. The use of such a domain name therefore generally constitutes valid legal use. This...

In it decision dated April 22, 2010, the German Federal Supreme Court came to the conclusion that a system and method is not excluded from patent protection as a program for a computer when a concrete technical problem is being solved by technical means. In this respect it is sufficient when the operation of a data processing program in order to...

In a decision dated March 18, 2010 the German Federal Supreme Court came to the conclusion that a patent holder enjoys patent protection in the Federal Republic of Germany even if there are omissions in the timely filed German translation of the respective European Patent. In such cases a corrected translation can be submitted at a later date, as...

In October 2008, the President of the EPO had referred a number of questions related to the patentability of computer-implemented inventions to the Enlarged Board of Appeal. Now, the Enlarged Board of Appeal has issued its Opinion in relation to this referral. The Enlarged Board concluded that there is no divergence in the case law which would make...

In its decision dated April 20, 2010 the German Federal Supreme Court (BGH) confirmed the validity of the German part of European patent EP 618 540. The patent had been revoked in its entirety by the Federal Patent Court in October 2006. In view of the importance of the patent in the field of file management, the BGH issued a special press release...

In the opinion of the Regional Court of Hamburg, cease and desist claims cannot be brought against an access provider if external internet sites provide links to further websites where copyright-infringing music is available to download. The criteria for “disturbance liability” (Störerhaftung) are not met, and the access provider cannot be held...

A feature derived from the description of a patent must clearly belong to the teaching of the invention. In the same way, drawings are a part of the disclosure and are to be considered to have the same value as the claims and the description in the application. A solution depicted in the drawings is sufficient to constitute a possible embodiment of...

In the opinion of the Higher Regional Court of Cologne, by uploading a photo onto a social networking site like Facebook, consent is also given for access to the photo through other media via search engines. This applies unless the user explicitly protects his data from access by third parties.

The OHIM intends to reduce the costs for the registration of community trademarks. The registration fee will be abolished whereas the application fee will be slightly raised. This measures will result in an average cost reduction of about € 700 per application. The new schedule most likely will become effective the first week of May 2009. The...

The German Federal Supreme Court came to the conclusion that an invention is not enablingly disclosed when the patent claims contain generalized formulas which universalize the patent-protected area beyond the area available to the person skilled in the art through the teaching of the patent. This applies at least in a case where a feature defined...

In a recent decision, the German Federal Supreme Court found the sales model of a US producer of online games permissible. When a traditional book or DVD is purchased in a store, it can be re-sold at will. E-Books, computer programs, and online music, in contrast, are often bound to one account of an individual user and cannot be transferred to...

The German Federal Supreme Court held that a likelihood of confusion between the trademarks AIDA and AIDU may not be given. Despite the oral and visual similarity of the two marks, the disputed mark AIDA has a meaning in the eyes of the public which the mark AIDU lacks: the title of the opera from Giuseppe Verdi. The case was remitted to the Higher...

In a decision dated January 14, 2010, the European Court of Justice concluded that the German general prohibition against combination of a prize lottery with the purchase of a sales product (Art. 4 Nr. 6 Unfair Competition Act) is too restrictive, and therefore contradicts European Law. In the Court’s opinion, it must remain possible to assess this...

On January 14, 2010 the German Federal Supreme Court decided that a vehicle manufacturer cannot prevent the marketing of toy cars carrying the manufacturer’s trademark logo on the basis of his trademark rights. In the court’s opinion, the consumer will not see the trademark logo on the toy car as an indication of the car’s origin.

The German Federal Supreme Court has decided that, in light of unfair competition concerns, email advertisements are only allowable with the explicit or implied consent of the recipient. Even in the case of advertisements directed to business owners, presumed consent is not sufficient. Entering an email address on a homepage also does not imply...

The Counsel of Ministers accepted on December 4, 2009 a regulation regarding the community patent which now will be discussed in the European Parliament. According to this regulation the grant of the patent for an invention shall have immediately effect for the whole European Community. Furthermore, the Counsel of Ministers proposed the...

On January 29, 2010, a test phase of a bilateral Patent Prosecution Highway will begin at the European and Japanese Patent Offices. If a patent application to either office contains at least one allowable claim, the applicant will have the option of requesting that the second office perform a fast track examination of the corresponding claims in...

The German Federal Supreme Court (BGH) intends to refer several questions relating to Art. 6 of the Biotech Patent Directive to the European Court of Justice (ECJ). At issue is the interpretation of the terms "human embryos" and "commercial purposes". In the opinion of the German Federal Supreme Court, Art. 6 of the Directive is ambiguous in...

The European Court of First Instance came to the conclusion that an exclamation mark cannot be registered as a Community Trademark. According to the court, an exclamation mark – even if it is displayed in a rectangular frame – lacks the necessary distinctive character. Furthermore, the court did not accept the evidence as being sufficient that the...

On September 24, 2009, Thailand acceded to the Patent Cooperation Treaty (PCT). Three months after this date, namely on December 24, 2009, the PCT will come into force with regard to Thailand.

The German Federal Supreme Court came to the conclusion that the user of a mark together with the indication "®", without actually being owner of that mark or a licensee regarding that mark, is misleading in the course of business in a manner which is regularly relevant under unfair competition aspects. The term "misleading" already implies a...

In a decision, the German Federal Supreme Court came to the conclusion that in copyright law a simple license which is based and dependent on an exclusive license does not automatically terminate if the exclusive license is revoked due to non-use in accordance with Art. 41 Copyright Act.

The Patent Modernization Act has been published in the Federal Gazette on August 4, 2009 and will come into force on October 1, 2009. An amendment which is relevant in practice is that employees’ inventions which are announced to the employer after September 30, 2009 are automatically transferred to the employer. This, however, is not applicable if...

In a decision, the German Federal Supreme Court concluded that, as a consequence of an intellectual property infringement, the transfer of the infringer’s profit can be claimed against each infringer within a distribution chain. However, if one infringer within the distribution chain compensates the next infringer because of his/her delivery of...

Article 14 par.1 of the Community Design Patent Regulation provides that the right to a community design shall vest in the designer or his successor in title, whereas article 14 par.3 gives this right to the employer if a design is developed by an employee in the execution of his duties or following the instruction given by the employer. In a...

As the first Higher Regional Court in Germany, the Court in Munich decided that a trademark owner is entitled to interdict a distributer to sell trademark protected goods via Ebay. According to the Court, the restriction of competition resulting from this is justified on the basis of the European Community block exemption for vertical distribution...

In a recent decision, the European Court of Justices has in a case concerning the application of a three-dimensional European trademark for a chocolate bunny summarized the preconditions of "bad faith". It has to be taken into account: (1) The fact that the applicant knows or must know that a third party is using, in at least one member state, an...

In a recent judgment the European Court of Justice held that the use of a sign similar to a mark with a reputation in a comparison list must be considered as an advantage that has been unfairly taken of the distinctive character or the repute of that mark. According to the European Court of Justice the attempt of a third party is unfair, to ride on...

According to the new law which will shortly come into force, an international application for a design patent can be filed either directly at the International Bureau of the World Intellectual Property Organization (WIPO) or with the German Patent and Trademark Office at the free choice of the applicant. Previously, only a direct application at the...

The most important amendment concerns the Employees Inventor’s Act and is that in the future, the employer’s claim for a service invention no longer needs to be declared to the employee. Rather, the amendment provides that the employer automatically claims the invention unless he/she does not waive his/her claim to the benefit of the employee...

In a judgment the ECJ decided that trademark rights can be enforced against a licensee which violates a contractual obligation not to sell goods to a discounter. A precondition, however, is that this violation damages the prestige which gives these goods their air of luxury. In that case, there is no exhaustion of trademark rights.

With the acceptance procedure completed, the EPC will come into force in San Marino on July 1, 2009. The European Patent Organization has 36 contracting states and nine extension states.

According to a decision of the German Federal Supreme Court a patent infringer which is producing in correspondence with a patented industrial standard, can, under fairly narrow conditions rely on a “compulsory license defense” on the basis of anti-trust law. A precondition of this defense is that the patent infringer has asked for a license under...

In a recent judgment the German Federal Supreme Court has decided that a younger patent right can be limited in relation to the owner of an older patent right by the patent claim of the older right. The owner of the older patent may have the right to use. Also, a licensee of the older patent may rely on this use right. The use right, however, only...

As of April 1, 2010, new implementing regulations are applicable. Specifically, divisional applications will undergo far-reaching changes. For a divisional application, the applicant has to take into due account a time limit of 24 months after the first communication in respect to the earliest application. The applicant may file a divisional...

In a decision, the Federal Supreme Court of Germany (FSC) establishes that the disclosure of a general chemical structural formula in the prior art does not disclose the individual compounds falling thereunder. Rather, the decisive question is whether or not the concrete compound is disclosed. For this, concrete indications are needed in the prior...

Starting on April 1, 2009, the designation fee of a European patent application is € 500 independently of how many contracting states have been designated. This regulation concerns European patent applications filed on or after April 1, 2009 as well as international applications entering the regional phase on or after that date. For all previously...

The European Patent Organization and Montenegro signed an extension agreement. The extension agreement will come into effect later this year and have the consequence that, with a single patent application at the EPO, patent protection can also be obtained in Montenegro and therefore in a total of 39 member states.

According to a final decision of the German Federal Patent Court, the "Munich White Sausage" does not meet the requirements of European Community law for a registration as a geographical indication. According to the judgment, the "Munich White Sausage" is a "regional, mainly southern Bavarian speciality which is, however, not limited to the region...

On January 22, 2009, the German Federal Supreme Court has decided on three cases concerning adWord advertising at Google. Hereby, a third party trademark or company name is used as a keyword in the frame of a Google search to place an advertisement next to the hit-list. In a first case a third party trademark was used to place advertisement for...

The German Federal Supreme Court rendered a landmark decision on the preconditions for protection of a non-registered European design patent. Protection for this non-registered right only comes into existence if the design has been published in the territory of the European Community. A publication outside this territory is not sufficient. On the...

With the beginning of 2009, the former Yugoslav Republic of Macedonia has become the 35th member state of the European Patent Organization. This organization now includes all 27 EU member states plus Croatia, the former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, Switzerland and Turkey. Without being member states,...

In a decision, the Enlarged Board of Appeal of the European Patent Office defines criteria when stem cell inventions are not patentable.