Dr. Adrian Steffens, Patentanwalt bei BOEHMERT & BOEHMERT

Patent Applications for AI Technologies at Record High

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The innovation landscape in the field of artificial intelligence (AI) is flourishing. This is the result of a recent analysis by the German Patent and Trade Mark Office (DPMA). Speaking in Munich, Eva Schewior, President of the DPMA, reported that the number of patent applications for Germany has risen by 40 percent over the past five years, particularly in technology classes with a strong connection to AI. The core areas of AI, including special digital computer systems and neural networks, including the associated learning methods, have even seen a tripling of applications since 2019.

This development shows that AI technologies, such as generative tools, are increasingly being integrated into everyday life and are likely to play an important role in many areas of life in the future. In addition to the core areas, the DPMA found a high level of innovation in fields such as image analysis, computer technology, medical technology and transport and vehicle technology.

In terms of patent applications for the German market, US applicants lead with a share of 32.4 percent of all applications published in 2023. Germany follows with 17.1% and Japan with 12.4%. China and the Republic of Korea show the largest increase in publications compared to the previous year.

Inventions related to AI are regularly based on mathematical models implemented as software. Patent protection for these computer-implemented methods is limited in that computer programs as such are not patentable. Instead, patent protection requires that the invention contributes to solving a specific technical problem by technical means. This contribution may, for example, relate to the control of an autonomous vehicle.

BOEHMERT & BOEHMERT has already supported and accompanied many of these AI patent applications. With our experience in the field of AI technology, we are able to advise our clients in a targeted manner and respond specifically to their needs in the dynamic environment of AI innovations.

Prof. Dr. Goddar, Dr. Xia Pfaffen­zeller and Melanie Müller are patent experts at the China IP SME Help­desk of the European Commission

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In addition to BOEHMERT & BOEHMERT partner and patent attorney Prof. Dr. Heinz Goddar and patent attorney Dr. Xia Pfaffenzeller, both of whom have been patent experts in the China IP SME Helpdesk program of the European Commission for some time, attorney at law Melanie Müller has now also been appointed a “standing patent expert” of the China IP SME Helpdesk.

About China IP SME Helpdesk

The China IP SME Helpdesk helps small and medium-sized enterprises (SMEs) in the European Union and the other countries of the Single Market Program (SMP) to protect and enforce their intellectual property rights in or in relation to mainland China, Hong Kong, Macao and Taiwan through the provision of free information and services. These take the form of jargon-free, first-line, confidential advice on intellectual property and related issues, plus training, materials and online resources.”

Trade Mark Misuse in Practice

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To the chagrin of honest entrepreneurs, trade marks are sometimes misused and used against them. The aim of the applicant may be to obtain a blocking position against competitors. Alternatively, the application may be speculative, based on the hope that a company will want to use the mark for its goods or services in the future and will therefore buy or license it from the applicant.

Case Law on Bad Faith Trade Mark Applications

Businesses are not unprotected against such trade mark applications. Case law divides these cases into those with and without intent to injure, under the general heading of bad faith. If, for example, a trade mark application is filed to prevent a competitor from continuing to use the trade mark, bad faith is usually present because of the intention to block and obstruct. Since the Classe E decision, the German Federal Supreme Court (Bundesgerichtshof – BGH) has also assumed that there is an “abusive exploitation of a merely formal legal position” if someone

  • registers a large number of trade marks
  • has no serious intention of using the marks, and
  • the trade marks are essentially hoarded for the purpose of obtaining injunctions and claims for damages against third parties using identical/similar designations (BGH, judgement of 23 November 2000, I ZR 93/98, § 35 – Classe E).

Proof of the subjective elements, i.e. proof of the applicant’s lack of intention to use, is regularly problematic in the practical application of the law.

Abusive Exploitation of a Merely Formal Legal Position

The requirements laid down by the BGH have recently been applied by the regional courts in Stuttgart and Hamburg in several cases. A manufacturer of sports watches, represented by BOEHMERT & BOEHMERT, faced Capella EOOD, a company based in Bulgaria and represented by Mr Erich Auer. Mr Auer is well known in the trade mark scene for having registered thousands of trade marks over the years through various shell companies such as Ivo-Kermatin Ltd, Suebi Ltd and Segimerus Ltd. In the present case, he took action against the watch manufacturer and its European dealers on the basis of one of these many trademarks. The case concerned a sports watch offered under the same name as the trade mark. In response to these warnings, we issued a letter of cease and desist to Capella EOOD on behalf of the watch manufacturer for unauthorised warnings of intellectual property rights. This is because a claim for injunctive relief under trademark law is precluded by the defence of abuse of rights in the case of an application made in bad faith, i.e. it cannot be enforced in the long term.

The Regional Court of Stuttgart had to decide and issued a preliminary injunction against Capella, which we had applied for and which it confirmed on opposition (judgment of 18 October 2023, 32 O 73/23 KfH, not yet final). The difficulty in the proceedings was to establish that the trade mark applicant had no subjective intention to use the trade mark and was acting in bad faith based on the objective circumstances of the case. The following facts indicated that the applicant had never intended to use the trade mark itself in its own business or for third parties on the basis of a consultancy concept: no external marketing efforts were made, no comprehensible business model or trade mark concept could be presented, and the trade mark was transferred back and forth between Erich Auer’s various companies. In addition, the applicant cancelled the majority of its trade marks after the expiry of the official deadline for the payment of fees. All in all, there was every indication that he had hoarded the trade marks essentially for the purpose of obtaining injunctions and damages against third parties using identical or similar designations. This constituted an abuse of the formal legal position of the trade mark proprietor. The Stuttgart Higher Regional Court (Oberlandesgericht) dismissed Capella’s appeal against this decision on the grounds that it was obviously unlikely to succeed under Section 522(2) of the German Code of Civil Procedure (ZPO) (decision of 27 February 2024, 2 U 187/23).

This is not the first decision in which Mr Auer’s business model has been found to be dishonest. Only recently, the General Court of the European Union also found bad faith in one of his trade mark applications – in this case by Copernicus EOOD (General Court, judgment of 17 January 2024, T-650/22 – ATHLET).

Felix Hermann, Patent Attorney at BOEHMERT & BOEHMERT

Felix Hermann reappointed to the SACEPO Working Party on Guidelines

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Personal appointment “ad personam” by the President of the European Patent Office, António Campinos.

For the second time, BOEHMERT & BOEHMERT patent attorney and partner Felix Hermann has been appointed to the Working Party on Guidelines of the Standing Advisory Committee to the European Patent Office (SACEPO). Prior to his first term of office on the Working Party on Guidelines, Felix served a member of the Working Party on Rules, in which proposals for changes to the legal framework of the EPC, including in particular its Implementing Regulations, are discuessed.

The 15 members of the SACEPO Working Party on Guidelines and representatives of the European Patent Office (EPO) discuss the annual revision of the Guidelines for Examination at the EPO and for Search and Examination at the EPO as PCT Authority (“Guidelines for Examination”). The Panel thus acts as a forum for discussion on proposed amendments to the next edition of the Guidelines for Examination and on current legal issues in case law.

ABOUT SACEPO

SACEPO is the main advisory body of the European Patent Office. It comprises representatives of IP and industry associations from around the world, as well as European and international patent attorney associations. Thanks to the Committee, the European Patent Office is close to its users in order to better respond to their needs and the changing requirements and conditions of a dynamic and global patent system.

For further information on the work of the EPO Standing Advisory Committee and its working groups please visit the website of the EPO.

Dr. Eckhard Ratjen comments on the GC judgment T-736/22 on the question of the likelihood of confusion of trade marks when descriptive elements of signs are identical in GRUR-Prax 06/2024

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In issue 06/2024 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht, Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Eckhard Ratjen discusses the General Court judgment T-736/22 on the likelihood of confusion in the case of trade marks which are only identical with regard to descriptive elements of the sign.

In this judgment, the court follows the first instance decision and confirms that there is no likelihood of confusion in the case of the trade marks SNACK MI and CAMPOFRIO SNACK’IN.
A similarity in descriptive elements of the signs is not sufficient for a likelihood of confusion even if these elements visually dominate the signs.

Dr. Eckhard Ratjen welcomes the ruling of the General Court in his article.
For a higher degree of legal certainty for trade mark applicants, it is to be hoped that the Opposition Divisions and Boards of Appeal of the EUIPO will heed the standards set by the General Court in cases such as the one described, according to the attorney at law.

The complete article by Dr. Eckhard Ratjen was published in the 06/2024 issue of GRUR-Prax. Registered users of Beck-Online can download the article in German here.

“Only the register is relevant in opposition proceedings” – Dr. Rudolf Böckenholt on the decision of the General Court in GRUR-Prax 6/2024

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In the current issue 6/2024 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt explains a decision of the General Court of 20 December 2023 (T-655/22, GRUR-RS 2023, 36614 – WINE TALES RACCONTI DI VINO/WINE TALES) on the question of whether circumstances outside the register are relevant to determine the likelihood of confusion in opposition proceedings.

The court’s answer is a clear: “No!”

The meaning and design of the trade marks’ representation and their planned and actual use play no role in determining whether goods/services are similar. This must be assessed solely on the basis of the information shown on the register. In the original case, it was disputed in particular whether advertising services could be similar to alcoholic beverages, if the trade mark gives rise to the presumption that the advertising services relate to alcoholic beverages.

The court clarifies that products and services can be complementary, but there must be such a close connection between products that one is indispensable or otherwise important for the other. The existence of common points of reference is not sufficient.

The complete article by Dr. Rudolf Böckenholt in German can be found in the printed edition of GRUR-Prax 06/2024. Subscribers to Beck-Online can view it online here.

Dr. Ute Kilger and Dr. Sebastian Engels significantly involved in negotiations on model contract clauses for clinical research

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Mandated by Deutsche Hochschulmedizin e. V., the two partners of the law firm have been involved since 2019 in the negotiations for the development of guidelines for the drafting of contracts for clinical trials with medicinal products. The model contract clauses 2.0 have been available since the end of 2023.

In terms of the number of clinical research studies, Germany is currently at risk of losing ground to leading countries such as Spain and France. One of the main reasons identified for this is the comparatively long time it takes to negotiate contracts between study sponsors, usually pharmaceutical companies, and trial centers, e.g. medical practices or clinics. A frequent point of contention in contract negotiations is the assignment of rights to inventions and the question of whether additional remuneration is to be paid for the transfer of inventions. It is not uncommon for such test centers to be university hospitals that are financed by public funds, which means that state aid regulations also play a role.

However, lengthy contract negotiations hamper innovation in Germany, deter study sponsors, cost money and delay the market launch of important drugs.

To avoid these delays, sample contract clauses for drafting contracts for clinical trials with medicinal products were published back in May 2019 – by “Deutsche Hochschulmedizin e. V.”, the “KKS-Netzwerk” (“Koordinierungszentren für klinische Studien KKS and Zentren für klinische Studien ZKS”), the pharmaceutical associations vfa and BPI as well as the BVMA (Bundesverband Medizinischer Auftragsinstitute e. V.).

At the end of 2023, after lengthy negotiations, a further developed version was published, supplemented by the frequently controversial topics of “data protection” and “inventions/property rights in the context of clinical trials”. It is intended to help speed up the drafting of contracts between commercial sponsors, trial centers and any third parties with practical recommendations. Other associations, such as the BPI (Bundesverband der Pharmazeutischen Industrie) and the BVMA (Bundesverband Medizinischer Auftragsinstitute BVMA e. V.) have also signed up to the further developed model contract clauses 2.0.

Translated with DeepL.com (free version)The BOEHMERT & BOEHMERT partners Dr. Ute Kilger, patent attorney, and Dr. Sebastian Engels, attorney at law, have been significantly involved in the negotiations on the drafting of the extended model contract clauses relating to IP rights since 2019. The attorneys were mandated by Deutsche Hochschulmedizin e. V.

Christoph Angerhausen, Dr. Daniel Herrmann and Dr. Michael Rüberg with article in Chambers Litigation Guide 2024

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Germany – Law and Practice

A comprehensive guide to intellectual property law, Chambers’ annual Global Practice Guide: Patent Litigation 2024 covers 24 jurisdictions. The content focuses on the latest developments in the legal framework and practical implementation that have occurred since the previous edition. It covers all relevant aspects of patent litigation, from infringement proceedings and the licensing of IP rights to cost developments and alternative dispute resolution.

BOEHMERT & BOEHMERT partners Christoph Angerhausen and Dr. Daniel Herrmann (both patent attorneys) and attorney at law Dr. Michael Rüberg have contributed the comprehensive Law and Practice section for the German jurisdiction. They shed light on the latest developments in the legal framework and practical implementation in Germany that have arisen since the previous year.

The complete Patent Litigation Guide 2024 is available for free on the Chambers website.

The BOEHMERT & BOEHMERT Partner contribution “Germany – Law and Practice” can be viewed here.

Fabio Adinolfi, Rechtsanwalt bei BOEHMERT & BOEHMERT

Fabio Adinolfi in GRUR-Prax 04/2024 on the deter­mination of object value for unsolicited adverti­sing emails

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Most e-mail users are probably annoyed by unsolicited advertising e-mails, but very few take action against them. Not so a plaintiff who took legal action against 5 senders of unsolicited online advertising addressed to him in the first step before the Berlin Regional Court (LG).

BOEHMERT &BOEHMERT attorney at law Fabio Adinolfi deals in the current GRUR-Prax with the object value that is generally to be determined for a first advertising email and repeat offenses. In his article, he deals with the calculation methodology of the Berlin Court of Appeal (KG), which was consulted after the plaintiff sought to set a higher value in dispute for fees.

The full article in German language by lawyer Fabio Adinolfi can be found in GRUR-Prax 04/2024. Subscribers to Becks-online can view the article here.

Dr. Martin Schaefer, Attorney at Law at BOEHMERT & BOEHMERT

Dr. Martin Schaefer as a panel member on March 14 at the “WIPO Conversation” on IP and high technology

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Panel topic: Can regulation keep up?, March 14, 10:05 a.m.

This year’s 9th session of the World Intellectual Property Organization (WIPO) will focus on artificial intelligence (AI), which is accelerating technological progress on the one hand and changing entire industries and lifestyles in ways that are not yet foreseeable on the other.

Moderated by Yecid Rios, Zapata&Ríos Abogados Asociados from Colombia, BOEHMERT & BOEHMERT partner and attorney at law Dr. Martin Schaefer will discuss the topic of regulation together with Natasha Allen (Foley & Lardner LLP, USA), the Dean of the National University of Singapore, Simon Chesterman, Seagull Song (King & Wood Mallesons, China) and Paolo Lanteri (WIPO). Dr. Schaefer’s short presentation will focus on the draft EU AI Act.

The event is aimed at policy makers, intellectual property professionals with general knowledge of artificial intelligence and technical experts with limited knowledge of intellectual property. The panel will start at 10:05 a.m. on March 14 and conclude at 11:20 a.m. after a Q&A session.

Registration for analog and digital participation in the conference in Geneva is still possible via the WIPO website.
The detailed program can be found here.