Dr. Daniel Herrmann, Patent Attorney at BOEHMERT & BOEHMERT

“Intellectual property rights have a significant impact on business” – Interview with Dr. Daniel Herrmann in the WiWo supplement 12/2025

/in

In a supplement to the December 2025 issue of WirtschaftsWoche, Dr. Herrmann explains how small and medium-sized enterprises (SMEs) can protect their rights and generate growth with the help of an IP strategy.

The protection of intellectual property is particularly important for small and medium-sized enterprises, according to BOEHMERT & BOEHMERT partner and patent attorney Dr. Daniel Herrmann in an interview with the editorial team of inpact, a supplement to WirtschaftsWoche.
The risks of idea theft have increased significantly as a result of digitalization, internationalization, and the use of artificial intelligence. In addition, hacker attacks and increasing employee turnover increase the risk of knowledge leakage.

A targeted IP strategy, on the other hand, can promote growth: property rights secure market share, create exclusivity, and serve as bargaining chips for licensing or cross-licensing.
Studies show that SMEs that apply for patents are up to 20 percent more likely to grow. In the case of European patents, the probability of growth is as high as 30 percent.
A well-structured IP portfolio also increases the value of a company, as intangible assets play a decisive role in investments – think of start-ups, for example – as well as acquisitions and mergers.

The full interview with Dr. Daniel Herrmann in German is available online here.

Dr. Julian Wernicke, Attorney at Law at BOEHMERT & BOEHMERT

Dr. Julian Wernicke, in GRUR Prax 23/2025, discusses statements that violate personal rights in client relationships.

/in

To what extent are statements that violate personal rights actionable in a client relationship? In a ruling, the Higher Regional Court of Dresden provided important clarifications regarding the assertion of possible injunctive relief claims.

The extent to which such statements are legally actionable is a recurring topic in case law. In a recent ruling dated 8 September 2025, the Dresden Higher Regional Court considered various statements made by a client to their lawyer, providing important clarifications regarding the assertion of possible injunctive relief claims.

In his article ‘Statements within the client relationship’ in GRUR Prax 23/2025, Julian Wernicke of BOEHMERT & BOEHMERT analyses the decision of the Dresden Higher Regional Court. This decision was based on a lawsuit filed by a lawyer who objected to statements made by her client during telephone calls and in a negative online review.

The court found that statements made in the context of a confidential conversation within a client relationship are privileged and cannot therefore be the subject of an injunction. Furthermore, the Dresden Higher Regional Court ruled that the plaintiff was not personally affected by the statements in question, since, despite her position as a partner, she is not identified with the law firm in a way that allows for direct personal attribution.

In his article, Julian Wernicke evaluates the ruling, emphasising that the privilege of confidential client consultations is integral to the legal profession. He also stresses that the question of personal involvement must be carefully examined if statements are not clearly directed at a specific person.

The full article is available in German to registered Beck Online users here.

Dr. Julian Wernicke, Attorney at Law at BOEHMERT & BOEHMERT

CJEU specifies protection for works of applied art

/in

On 4 December 2025, the CJEU delivered its ruling on how furniture and other objects of applied art should be examined to establish their eligibility for copyright protection as ‘works’ of applied art, in joined cases C-580/23 and C-795/23.

Background to the decision

The proceedings in question concern the Swedish companies Mio AB et al. and Galleri Mikael & Thomas Asplund Aktiebolag (Asplund). Asplund designs and manufactures furniture, particularly dining tables from the ‘Palais Royal’ series. Mio operates in the furniture and interior design retail sector, selling dining tables from its ‘Cord’ series. Asplund claimed that the ‘Palais Royal’ tables were protected as works of applied art and that Mio had infringed its copyright with the ‘Cord’ tables.

The second case involved a similar set of facts between USM U. Schärer Söhne AG and konektra GmbH in Germany.

The referring courts in Sweden and Germany asked the CJEU various questions, such as how everyday objects should be assessed as works of applied art, and in which cases such works are infringed.

Assessment by the CJEU

Firstly, the EU Court of Justice addresses the overlap between copyright and design protection. It clarifies that these two types of protection have different objectives and requirements, meaning there is no rule-exception relationship between them. A work of applied art is protected by copyright if it is considered original, reflecting the creator’s personality through their free and creative decisions. However, this originality is lacking if the creation of the object was determined by technical considerations, rules, or other constraints that left no room for artistic freedom. Design protection, on the other hand, depends on objective protection criteria of novelty and individuality, assessed in comparison with older designs.

The Court then specifies the criteria for assessing the originality of works of applied art. According to these criteria, an object must ‘reflect’ the personality of its creator by ‘expressing’ their free and creative decisions in order to be considered an original creation. While the creative process and the author’s intentions may be taken into account, this is only possible if these aspects are evident in the object itself. Therefore, the author’s creative decisions must be sought and identified in the form of the object. External factors, such as the presentation of the design at exhibitions or in museums, or its recognition in professional circles, are irrelevant.

Finally, the Court addresses the question of when copyright infringement occurs. It states that infringement exists if the creative elements of the protected work have been recognisably incorporated into the alleged infringing object. The overall impression created by the two works and the level of creativity of the original work are irrelevant.

Significance for the design industry and practice

For rights holders, the decision is an important confirmation. Copyright protection extends beyond ‘works of art’ in the traditional sense to include furniture, lamps, game pieces, and all manner of design objects. Previous or parallel design protection does not affect copyright protection.

For a work to be eligible for copyright protection, it must be original. In its ruling, the CJEU made it clear that certain factors are irrelevant when assessing whether an everyday article is original. According to the ruling, the creator’s subjective intention is irrelevant. Design prizes and other awards conferred after the article’s creation are also irrelevant.

For designers and product manufacturers, it is crucial that their personality is reflected in the objects they have created; the design should express their creative freedom. However, if the idea and expression coincide because technical functions dictate expression, limiting the possibilities for implementing an idea, the criterion of originality is not met. This is also reflected in infringement, because the creative elements of the original work must be recognisable in the infringing object.

Prof. Dr. Heinz Goddar and Melanie Müller as co-authors in Les Nouvelles, December 2025, on the potential of the PMAC

/in

Launching in 2026, the Patent Mediation and Arbitration Centre of the UPC offers confidential, efficient solutions for patent and SEP disputes – a flexible alternative to traditional litigation.

In the article “Potential of the Patent Mediation and Arbitration Centre (PMAC) of the Unified Patent Court (UPC)” in this year’s December issue of the “Journal of the Licensing Executives Society International,” the authors Rebekka Porath (Intellectual Property Fellow Innovation Network Germany), Dr. Peter Camesasca (partner at Camesasca BVBA, Brussels, Belgium), and BOEHMERT & BOEHMERT attorneys Prof. Dr. Heinz Goddar (patent attorney) and Melanie Müller (attorney at law) shed a light on the institutional framework, competence, and procedural potential of the Patent Mediation and Arbitration Centre (PMAC).

This was established as an institutional component with the introduction of the Unified Patent Court (UPC) and is intended to serve as a specialized ADR (Alternative Dispute Resolution) body for patent disputes from 2026 onwards. The PMAC offers mediation and arbitration for European and unitary patents as well as SPCs (Supplementary Protection Certificates). Its aim is to provide efficient, flexible, and confidential proceedings, complementing UPC litigation.

In their article, the authors see particular potential for the PMAC in SEP/FRAND disputes (Standard Essential Patents) following the EU’s withdrawal of the proposed SEP Regulation. The PMAC could fill a gap here by offering a neutral forum for licensing negotiations. However, it lacks mandatory procedures and transparency mechanism envisioned by the SEP regulation. The authors suggest introducing incentives for cooperation and partial disclosure of anonymized outcomes.

Furthermore, the recent decision by the Court of Justice of the European Union (CJEU) in BSH vs. Electrolux and the associated expansion of the jurisdiction of European courts for cross-border patent disputes could increase the attractiveness of the PMAC for global dispute resolution.

Overall, the authors see the PMAC as a new kid on the European patent dispute block – one well worth getting to know, to engage with, and, perhaps in time, to introduce into the family of established international ADR institutions.

Members of the Licensing Executives Society International (LESI) can download the full article here.

Update January 2026: The above-mentioned article entitled „Potential of the Patent Mediation and Arbitration Centre (PMAC) of the Unified Patent Court (UPC)“ was selected by the board of the Licensing Executive Society International as the publication of the month in Les Nouvelles 1/2026.

Dr. Michael Rüberg, Attorney at Law at BOEHMERT & BOEHMERT

BSH as a Gateway to Cross-Border Patent Enforcement: The Regeneron/Bayer vs Formycon and Onesta vs BMW Cases

/in , ,

The CJEU ruling in BSH v. Electrolux (C-339/22) changes the rules of the game. National courts emerge as pivotal nodes in transnational disputes and can rule on patent infringements even if the patent is valid in several countries. Initial practical cases demonstrate the scope of this ruling.

With its judgment in BSH Hausgeräte v Electrolux (CJEU, C-339/22), the Court of Justice of the European Union reshaped the framework for international jurisdiction in patent matters. The CJEU held that a national court in the defendant’s domicile may adjudicate infringement of a patent even when that patent is protected in other countries, and even if validity proceedings are pending elsewhere. What matters is solely that the seized court does not rule on validity with erga omnes effect, which remains reserved under Article 24(4) Brussels I Recast to the courts of the state of registration; an inter partes assessment of validity for infringement purposes remains permissible. For additional background, see our earlier article “Landmark ruling of CJEU with significant impact on european patent litigation strategies”, dated February 28, 2025.

Importantly, the reasoning in BSH is not limited to European patents. It applies to any patent—including US or other non-European rights—where the court is asked to decide solely on infringement. Unsurprisingly, patentees have already begun to explore these new possibilities. This is particularly visible in two current cases pending before the Munich I Regional Court: the life-sciences matter Regeneron/Bayer vs Formycon, the first known instance of a Europe-wide injunction under the BSH framework on the basis of an EP patent, and the technology-focused Onesta vs BMW dispute, where the application of BSH to US patents is now squarely at issue.

Regeneron/Bayer vs Formycon: The First Extensive Application of BSH in the EP-Patent Context

The Regeneron/Bayer case concerns the alleged infringement of a European patent, whose German part had previously been upheld in amended form. The Munich I Regional Court granted first a preliminary cross-border injunction and later a permanent injunction, both extending to more than twenty European states. The court explicitly relied on the BSHreasoning, grounding its international jurisdiction in Formycon’s domicile in Germany.

The validity of the German part of the EP patent did not require renewed assessment; the focus lay instead on whether Formycon’s planned biosimilar product implemented the patented technical teaching—at least by way of equivalence. Notably, the court required neither separate technical assessments for individual EU Member States nor expert opinions on the application of foreign law. The court emphasised that it was for the defendant to substantiate that product variants intended for other jurisdictions differed technically, or that foreign legal regimes imposed materially different requirements for the infringement assessment. As Formycon made no such submissions, the court proceeded on the basis of a technically uniform product and an absence of demonstrated foreign-law divergences.

Against this backdrop, the court extended its infringement analysis—including its finding of equivalence—to all affected European markets. This decision represents the first publicly known example in which a German court has applied the BSH principles to an EP patent and issued a wide-ranging, Europe-wide injunction on that basis.

Onesta vs BMW: Testing the Extra-European Reach of BSH

Whereas Regeneron/Bayer employs the BSH framework within the European patent system, Onesta IP takes a further step. The company has filed three infringement actions before the Munich I Regional Court against BMW AG. In addition to a European patent, Onesta asserts two US patents, alleging infringement by head-unit modules manufactured in Germany.

This makes the case particularly significant: for the first time, a court may be asked to determine the infringement of US patents under the jurisdictional mechanism confirmed in BSH. Based on the defendant’s domicile and the strict separation between infringement and validity proceedings, a German court could—at least in principle—have jurisdiction to determine whether conduct in Germany infringes US patents, without trespassing on the exclusive US competence for validity questions.

It remains to be seen how the Munich I Regional Court will approach the US-law questions, which will almost certainly require expert evidence on foreign law. Should the court ultimately confirm jurisdiction and find infringement, it would be remarkable: for the first time after BSH, a US patent could be enforced through German civil-procedure mechanisms—without US-style discovery, without a jury, and with entirely different standards for injunctive relief (e.g. how eBay factors might be addressed in a German context). Depending on the outcome and on how questions of cross-border recognition (including potential US countermeasures such as anti-suit injunctions) are resolved, the case could open new avenues for global patent-enforcement strategies.

Conclusion: BSH Has Immediate Practical Impact—Within Europe and Beyond

The Regeneron/Bayer and Onesta/BMW cases illustrate that BSH is not a technical footnote but a practically influential development that is already reshaping patent enforcement in Europe. Regeneron demonstrates how cross-border injunctive relief based on a European patent can be obtained in a single German proceeding, while Onesta shows that patentees are prepared to push the BSH logic further and test European courts as potential venues for adjudicating infringement of foreign patents.

Both developments signal an important moment in the evolution of European patent litigation: jurisdiction increasingly centres on the defendant’s domicile; national courts emerge as pivotal nodes in transnational disputes; and the strategic potential of the European judiciary—as shaped by BSH—is being used visibly and decisively for the first time.