BOEHMERT & BOEHMERT Patent- und Rechtsanwälte: B&B Bulletin

Bulletin Issue May 2020

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28 May 2020 | Trade Marks

New administrative invalidation proceedings in German trademark law as of May 2020

As part of the implementation of the EU trademark law reform as of 1 May 2020 German trademark registrations might be challenged in full administrative invalidation procedures due to earlier rights as...

28 May 2020 | Trade Marks

International jurisdiction for infringement of an EU trade mark by advertising on the Internet

With its judgment in Case C-172/18 (AMS Neve Ltd and Others v Heritage Audio SL and Others), the Court of Justice of the European Union (CJEU) significantly strengthened the legal position of EU trade...

28 May 2020 | Trade Marks

Use of trademarks for reseller websites

It is settled case law that the use of a trademark in a domain name can constitute a "use as a trademark". The Federal Court of Justice has now further defined the legal constraints for a use of such ...

28 May 2020 | Copyright

Back to the higher threshold? - The CJEU decision Cofemel

Of all things, the notion of “a work” is not legally defined in any of the many EU directives on copyright, even though the term appears repeatedly in these directives. However, in recent years ...

28 May 2020 | Patent Litigation

Federal Court of Justice Redefines the Requirements for an Injunction in SEP Litigation in its Decision Sisvel ./. Haier (KZR 36/17)

Injunctions in relation to standard essential patents continue to be a hot topic and prove to be challenging for courts and parties alike. After a series of lower court decisions, the Federal Court of...

28 May 2020 | Patent Litigation

Additional defence options for patent infringers and faster nullity proceedings

The German Federal Ministry of Justice presented its long-awaited draft for the reform of the German Patent Act in mid-January. In particular, the draft provides for a new and controversially discusse...

28 May 2020 | Patent Litigation

Three-year statutory limitation period in patent ownership disputes

To date, it has been disputed in the literature whether a statutory limitation period of only three years or of 30 years applies to claims for the assignment of a patent application filed by an applic...

28 May 2020 | Patent Litigation

The decision of the German Constitutional Court on the Unitary Patent Court

After what at least felt like a long wait, the 2nd Senate of the German Constitutional Court (BVerfG) has now dealt with the constitutional appeal against the act for the implementation of the UPC in ...

28 May 2020 | Patents and Utility Models

It’s only human …

The European Patent Office has ruled at first instance that inventors are necessarily human beings. Two applications in which the patent applicant had designated an artificial intelligence as inventor...

Brexit Client Alert

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1 Feb 2020 | Designs

Brexit is there – no changes yet!

On January 31, 2020, 11 p.m. GMT, the UK has left the European Union. However, with no changes for businesses and consumers as of now. The Withdrawal Agreement includes a transitional period until Dec...

13 Dec 2019 | Designs

Post-election Brexit update on trade marks and designs

1. What is the current situation? Brexit is approaching but the Agreement remains to be ratified and transformed into UK laws. On October 28, 2019 another extension has been agreed until January 3...

Special Edition 2 February 2019

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22 Feb 2019 | Data Protection

Brexit and Data Protection Law – If the UK becomes a third country without a deal

In case of an unregulated hard Brexit, the European Data Protection Law would also come down with full force: The United Kingdom would become, from one day to the next, a “normal” third country and wo...

Special Edition February 2019

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5 Feb 2019 | Trade Marks

Update Brexit and trade marks – Madrid System set aside for International Registrations

The UK Government has laid to Parliament on 31 January 2019 additional draft regulations for Brexit (The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019). Further to ...

Special Edition January 2019

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18 Jan 2019 | Trade Marks

Brexit and trade marks – what’s next?

The political situation remains exceedingly difficult. However, as we have at hand the UK government’s surprisingly comprehensive and distinct proposals for the future fate of European Union Trademark...

Issue January 2019

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14 Jan 2019 | Patents and Utility Models

Inventive Plants and Animals can be patented after all!

The Board of Appeal of the European Patent Office declared Rule 28 (2) EPC void. The Rule was introduced last year to prevent patenting of plants and animals resulting from processes involving breedin...

14 Jan 2019 | Patents and Utility Models

The EPO is making another attempt at Deferred Examination

The EPO launched a new online user consultation on the possibility of allowing more flexibility in the timing of the examination process by offe-ring means to postpone the examination of European pa...

14 Jan 2019 | Unfair Competition

Caution when referring to Industrial Property Rights! The indication “Patent Pending” may be misleading.

In a recent decision, the Higher Regional Court of Munich ruled that the advertising statement “Patent Pending” can be misunderstood in Germany and is therefore be regarded as unfair competition (file...

14 Jan 2019 | Unfair Competition

Implementation of the EU Trade Secrets Directive – German Government Draft Published

The EU Trade Secrets Directive must be implemented into national law. Following the much-discussed draft by the Federal Ministry of Justice and Consumer Protection, the legislator has now published th...

14 Jan 2019 | Data Protection

General Data Protection Regulation (GDPR) – Transparency obligations for companies

The GDPR introduced new and in some cases deviating regulations with regard to data protection information obligations. In particular, companies should review their data protection declarations and co...

14 Jan 2019 | Data Protection

Commentary on the Scope and Application of The Portability Regulation (Regulation (EU) 2017 / 1128)

Since 1 April 2018, the Portability Regulation (Regulation (EU) 2017/1128) prohibits geo-blocking of online content within the European Union. An Open Access commentary on the Scope and Application of...

14 Jan 2019 | Copyright

Are preventive duties on hosting service providers in line with EU law? Some comments from a legal perspective on Art. 13 Draft DSM Directive and “upload filters”

The debate on Art. 13 Draft DSM Directive has gained speed, after the Commission’s initial 2016 proposal was supplemented by the Council’s proposal of May 25, 2018, and after the European Parliament’s...

Issue February 2018

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13 Feb 2018 | Data Protection

Countdown to GDPR – Beware of the new Data Protection Rules

In about four months, on 25 May 2018, the European General Data Protection Regulation (GDPR) will enter into force. The new law will not only apply to European companies but also to Non-European compa...

13 Feb 2018 | Data Protection

Amendment of the telemedia act: Liability of WLAN operators will be further limited

The German legislator makes a new attempt to limit the liability of WLAN operators. Time will show whether the new law will last in view of contrary EU law. ...

13 Feb 2018 | Unfair Competition

Implementation of the EU Trade Secret Directive – companies need to anticipate new developments

The EU Trade Secret Directive (2016/943) must be implemented in national law. The publication of the draft bill by the German legislator is expected for the beginning of 2018. Companies active in Germ...

13 Feb 2018 | Unfair Competition

BGH on Internet test purchases

Until now, whoever ran a B2B shop had to meet stringent requirements in order to not be required to meet all consumer protection regulations. The German Federal Court of Justice (BGH) has now allowed ...

13 Feb 2018 | Patents and Utility Models

European Patent Office Revokes Broad Institute’s CRISPR-Cas9 “Gene Editing” Patent

The Opposition Division of the European Patent Office has revoked EP 2 771 468 B1, one of the fundamental CRISPR patents for lack of novelty, in essence due to formal irregularities in the priority ...

13 Feb 2018 | Patents and Utility Models

New EPO Guidelines for Examination on the Patenting of Graphical User Interfaces

The European Patent Office (EPO) has completely revised its Guidelines for Examination regarding “presentations of information” and “user interfaces” (EPO GL 2017, G – II, Sections 3.7 and 3.7.1). In ...

13 Feb 2018 | Patents and Utility Models

G 1/16 – To disclaim or not to disclaim

With the referral G1/16 to the Enlarged Board of Appeal of the EPO, legal guidance is expected as to whether a person skilled in the art, taking into account the gold standard for amendments developed...

13 Feb 2018 | Patents and Utility Models

Case Law: Infringement of German Patents by Supplying Goods outside of Germany

With its judgement “Abdichtsystem”, the German Federal Court of Justice has recently specified its previous case-law concerning the infringement of German (national or EP) patents by the supply of goo...

13 Feb 2018 | Patents and Utility Models

Update UPC: Further Delays and Obstacles

More than 18 months after the UK voted for BREXIT, the start of the UPC system has now been severely affected by those further delays that most commentators had already expected shortly after the vote...

13 Feb 2018 | Trade Marks

Amendments to the German Trademark Act

On 16 December 2015, Directive 2015/2436 of the European Parliament and the Council to harmonize the laws of the Member States relating to trade marks (the “Directive”) was adopted. The harmonization ...

13 Feb 2018 | Copyright

No infringement of copyright protected product at (international) trade fair in Germany

In a recent decision (file number I ZR 92/16), the German Federal Court of Justice ruled that the mere presentation of a product at a trade fair in Germany does not imply that the exhibitor specifical...

Issue July 2017

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5 Jul 2017 | Patents and Utility Models

Go German Patents! – Special rules allowing double patenting and parallel enforcement for the Unitary Patent System and national patents in Germany

With the rise of the Unitary Patent Court (UPC) and the Unitary Patent – a single European Patent for the European Union – the German implementing regulations of international patent law were recently...

5 Jul 2017 | Patents and Utility Models

Overview: The German case law on standard-essential patents after Huawei ./. ZTE

Standard-essential patents controlling the access to key technologies have been the subject of debate for several years. In the landmark decision Huawei vs. ZTE, the European Court of Justice (ECJ) es...

5 Jul 2017 | Patents and Utility Models

G1 / 15 – the antidote against “poisonous priority”

In its latest decision, G1 / 15, the enlarged Board of Appeal of the European Patent Office ended the possibility of “poisonous priority”. According to this decision, under the EPC, entitlement to par...

5 Jul 2017 | Copyright

Reform of copyright contract law enters into force

On 1 March 2017, the reform of German copyright contract law took effect. The reform brings along new challenges, in particular, new claims to information and accountability as well as new provisions ...

5 Jul 2017 | Copyright

CJEU Filmspeler: Landmark ruling on streaming and preparatory acts to copyright infringements

CJEU Filmspeler is a ground-breaking copyright decision in many ways. By qualifying the distribution of technical devices (intended to make streaming of copyright infringing content possible) as a mak...

5 Jul 2017 | Copyright

The German Federal Supreme Court rules on World of Warcraft

Computer games are becoming more and more important, not only in everyday life but also in legal theory. The German Federal Supreme Court (BGH) has now issued a decision on the online game World of Wa...

5 Jul 2017 | Unfair Competition

Recall obligation always part of injunctive relief?

In a recent unfair competition case, the Federal Supreme Court (BGH) ruled that injunctive relief prohibiting product distribution and / or advertisement may also implicate an obligation to actively r...

Special Edition April 2017

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11 Apr 2017 | Trade Marks

Update Brexit – Exit triggered on March 29, 2017

The notification by the UK Government of March 29, 2017, delivered to the EU Council, is now setting the stage for the exit negotiations. These have to be concluded between the parties and ratified by...

Issue December 2016

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1 Dec 2016 | Patents and Utility Models

The Initiative “Early certainty from Examination” – possible collateral damages and what this means for the applicant

Early certainty from examination for patent applications is the aim of the European Patent Office’s initiative which bears the same name. In the future, there should only be 12 months between the appl...

1 Dec 2016 | Patents and Utility Models

The Patenting of Graphical User Interfaces

The Boards of Appeal of the European Patent Office (EPO) have recently commented several times on the question of the patenting of graphical user interfaces and have more narrowly defined the area in ...

1 Dec 2016 | Patents and Utility Models

Equivalent patent infringement if only one possible embodiment is addressed by the claims

In two of the latest decisions of the Federal Court of Justice of Germany, the earlier case law regarding claim construction has been discussed. In particular, the scope of protection by way of equiva...

1 Dec 2016 | Patents and Utility Models

First provisional compulsory license issued in Germany on a European patent for an AIDS medicament

The German Federal Patent Court has ordered for the first time a provisional compulsory license under Section 24 of the Patent Act, allowing Merck (US) to continue to market the HIV-drug raltegravir, ...

1 Dec 2016 | Anti-Trust

CJEU: The antitrust assessment of licence contracts for patents which have become invalid

In its decision of 7 July 2016 (case C-567/14 – Genentech / Sanofi-Aventis), the CJEU followed up on its antitrust Ottung case law (320/87, EU: C: 1998: 195, para. 11 et sqq.) and confirmed that licen...

1 Dec 2016 | Trade Marks

Change of policy by the CJEU: Application for partial renewal of European Union trademark does not contain an implicit partial renunciation

With its decision of 22 June 2016, the CJEU, the highest European instance in trade mark matters, corrected the previously constant practice of partial renewals of European Union trade marks (EUTM) in...

1 Dec 2016 | Trade Marks

CJEU: On the liability of operators of physical market places

In its decision of July 7, 2016 (file no. C-494/15), the CJEU continued its case law on online-market places (L´Oreal./.ebay, file no: C-324/09) and applied it to so-called offline-market places. The ...

1 Dec 2016 | Copyright

Interview in the journal Neue Juristische Wochenschrift (NJW) - Germany’s publishers take on Google

It seems they will not be friends, Germany’s publishers and Google. In February, they met before the Regional Court of Berlin. Market abuse is the accusation made by 41 publishers against the search e...

1 Dec 2016 | Copyright

What happens now after the German Federal Constitutional Court’s Metall-auf-Metall Decision?

Sampling technology has become an integral part of today’s music production. It is not unusual in recording studios for artists and producers to recall sounds from other artist’s productions which the...

1 Dec 2016 | Copyright

Reform of EU Copyright Law - Proposals by the European Commission for a digital single market

"Copyright is everywhere": In the digital knowledge and entertainment society of today, copyright law controls the distribution and use of content. Jean-Claude Juncker, President of the European Union...

Special Edition June 2016

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1 Jun 2016 | Patents and Utility Models

The “Brexit” and its Consequences for IP Rights

On Thursday last week (23 June 2016), the UK voted to leave the EU, and thereby decided for what has become known as the “Brexit”. As of today, it is still uncertain what the exact implications of thi...

Issue June 2016

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1 Jun 2016 | Unfair Competition

Uniform protection for trade secrets in the EU is in the offing

The upcoming EU directive on trade secrets will provide enhanced protection for trade secrets almost on a par with intellectual property rights. ...

1 Jun 2016 | Data Protection

Compulsory Information on Online-Dispute Resolution from EU-Directives and EU-Regulation

Online sellers have to cope with the introduction of dispute resolution procedures for consumer transactions. This applies on a national level and to cross-border trade in goods and services on a Euro...

1 Jun 2016 | Patents and Utility Models

Swiss-Type claims cannot be changed to Compound-For-Use claims

In a recent decision, the Technical Board of Appeal of the European Patent Office ruled that Swiss-type claims pertaining to the use of a known medicament in the treatment of a further disease cannot ...

1 Jun 2016 | Patents and Utility Models

No Supplementary Protection Certificates for Medical Devices

The German Federal Patent Court refused to grant a Supplementary Protection Certificate (SPC) for aminosilane-coated iron oxide nanoparticles which were authorized for the European market as a medical...

1 Jun 2016 | Patents and Utility Models

News on the Unitary Patent

In our Bulletin, we report regularly (most recently on the renewal fees in the December 2015 issue) on the route to a unitary European patent system. The recent progress comprises in particular the su...

1 Jun 2016 | Patents and Utility Models

No registration requirement for a license to use a EUTM

On February 4, 2016, the CJEU confirmed with its Judgment in Case C-163/15 that a licensee may bring proceedings alleging infringement of a European Union Trademark (EUTM) which is the subject of a li...

Special Edition February 2016

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1 Feb 2016 | Trade Marks

Reform of the Community Trademark Regulation

The long debated reform of the European Union Trademark System has finally led to a new Regulation on the Community Trademark as well as new Directive for the EU member states concerning the national ...

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