Scales of justice representing the Unified Patent Court (UPC) and current developments in European patent litigation

G 1/25 – More legal certainty or a change to the worse?

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In G 1/25, the EPO’s Enlarged Board of Appeal has ruled on the extent of description adaptation following claim amendments, establishing a “conditional middle position” – with legal and practical risks for the practitioner.

Applicants are required to “adapt” the description to the amended claims of a patent application once the claims are allowable. This requirement must be fulfilled in proceedings before the Examining Divisions, the Opposition Divisions, and the Technical Boards of Appeal (TBoA). However, there has been inconsistent case law among the TBoAs on whether and to what extent such description adaptation is necessary. The Enlarged Board of Appeal (EBoA) has now decided the matter in G 1/25, establishing a “conditional middle position” that nevertheless still carries legal and practical risks for the practitioner.

Background: The Adaptation Requirement in Practice

The description adaptation requirement was introduced by the European Patent Office (EPO) to avoid legal uncertainty. Often, patent applications start with a broad, generalized description of the invention, and the initial claims are drafted equally broadly. During prosecution before the Examining Division, claims are usually amended and narrowed, sometimes focusing on only one specific embodiment out of several originally claimed. In the EPO’s view, leaving a broad description alongside narrower granted claims could cause confusion regarding the true scope of protection.

In practice, however, this requirement puts a heavy burden on the applicant. Constant “rewriting” and fine-tuning of the description to match the amended claims consume attorney hours and client budget. Furthermore, some examiners demand excessive deletion of allegedly non-claimed subject-matter, which risks worsening the applicant’s fall-back positions in future proceedings.

Conflicting Case Law on Article 84 EPC

Before this decision, the case law of the Boards of Appeal had developed along two conflicting lines. One line of decisions considers the support requirement of Article 84 of the European Patent Convention (EPC) to demand strict “consistency” between the claims and the description. On that view, passages describing embodiments that are no longer covered by the claims cannot simply remain unchanged: they must either be removed or expressly stated as not forming part of the claimed invention.

A fundamentally different approach was adopted in decisions such as T 1989/18, T 2194/19, and T 1444/20, and was developed in greater detail in T 56/21. These decisions construe the second sentence of Article 84 EPC as imposing a requirement solely on the claims to find support in the description, rather than creating a separate requirement for the description to conform to the claims. According to this reasoning, neither Article 84 EPC nor Rules 42, 43, and 48 EPC provide a legal basis for requiring applicants to amend the description accordingly.

Nevertheless, the Examining Divisions traditionally followed the former approach, requiring extensive adaptation of the description prior to grant.

From T 697/22 to G 1/25: A Conditional Middle Position

This issue arose in concrete terms in T 697/22, the case underlying the referral. There, the referring Board considered the claims of auxiliary request 1E of the proprietor to comply with the EPC, but identified an issue in the description: claim 1 had been limited to a more specific binder definition, whereas paragraphs [0013] and [0016] of the description still referred to broader disclosures. Unable to reconcile the diverging case law on whether such an inconsistency had to be removed, the Board of Appeal referred the matter to the Enlarged Board.

In its resulting decision, G 1/25, the Enlarged Board did not adopt either of the two opposing approaches. Instead, it formulated a new framework establishing a conditional middle position: adaptation is neither universally mandatory for formal concordance nor purely optional, but required only when an unresolved inconsistency leads to a concrete violation of the EPC.

A Restricted Definition of an Inconsistency

As a first step in this new framework, the Enlarged Board set a standard noticeably more relaxed than current Examination practice, ruling that:

“The EPC does not require an adaptation of the description, including any drawings, merely for the sake of formal concordance” (Reason 22).

Indeed, the Enlarged Board acknowledged that in many cases, “what may appear at first to be such an incompatibility can be resolved without difficulty by applying the principles for claim interpretation set out in G 1/24” (Reason 19) and therefore does not need to be removed. Nor is an inconsistency established “merely because the description, including any drawings, contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter” (Reason 20).

This principle builds on the “holistic approach” established in G 1/24, under which claim interpretation is the result of reading the claims, the description, and the drawings as a unitary process. For example, if the description contains a specific definition of a term used in the claims that deviates from ordinary usage, reading the claims and the description together may resolve the apparent mismatch without creating an inconsistency.

Correspondingly, G 1/25 defines an inconsistency narrowly:

“An inconsistency between the claims and the description, and any drawings, exists where one or more statements in the description, including the drawings, suggest an understanding of a claim which is incompatible with the apparent meaning of the claim, and that incompatibility cannot readily be resolved by applying the principles set out in G 1/24” (Reason 18).

When Must an Inconsistency Be Removed?

Crucially, even when an inconsistency in the above sense is established, it is not always necessary to adapt the description. The Enlarged Board held that the description and drawings must be adapted to amended claims only where:

“[T]he claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with” (Headnote of the decision).

The Enlarged Board highlighted the most prominent scenarios where such non-compliance arises. Under Article 84 EPC, if an unresolved inconsistency leaves it genuinely unclear whether particular information, examples, subject-matter, or embodiments are or are not within the scope of the claim, the claim is not supported by the description (Reason 35).

Furthermore, under Article 56 EPC, if a claim has been amended to establish inventive step over the prior art, but the description continues to express a broader technical teaching reflecting the unamended claim that conflicts with the rationale for non-obviousness, that contradictory statement in the description must be removed (Reason 38).

Evaluation: Form Over Function Persists

While G 1/25 provides welcome pushback against purely formalistic amendments, notable legal uncertainty remains. In practice, examiners and representatives will now have to assess two distinct hurdles before amending the description: first, whether a genuine inconsistency exists under G 1/24 principles, and second, whether that inconsistency causes a violation of the EPC.

The standard for establishing an inconsistency remains vague. The Enlarged Board noted that an inconsistency arises if the skilled person reading the claim in light of the description and drawings would be left in “real doubt” as to the meaning of the claim (Reason 19). However, because the term “real doubt” is undefined, it is open to subjective interpretation. A skilled person knows that patent specifications often contain broader disclosures extending beyond the scope of the claims, and understands that it is the claims that define the scope of protection. Against that background, it may be questioned whether statements in the description can create any genuine ambiguity as to what is actually claimed.

Furthermore, national courts have always capably handled the interpretation of patent claims in view of a broader description (as illustrated, for example, in the German Federal Court of Justice’s Occlusion Device decision, BGH X ZR 16/09). There was little need for the EPO to “help” national courts by maintaining such an exhaustive adaptation practice.

Applicants must now allocate resources either to adapt the description extensively or to argue extensively against an examiner’s request. This means more work for attorneys and more costs for applicants with little substantive gain—a classic case of form over function. Most concerningly, forced deletions of subject-matter during EPO prosecution risk being interpreted by courts in later proceedings as a voluntary waiver, with potentially severe consequences for patent enforcement.

Practical Implications

For daily practice, this decision means, in particular, that the description-adaptation practice widely criticized today is unlikely to disappear. If anything, the confirmation of the holistic approach to claim interpretation established in G 1/24 makes the need to adapt the description even more prevalent, not less.

When drafting an application, the future need for description adaptation should already be borne in mind, which makes terminological consistency particularly important. This is especially true for American-style drafting, where the terms used in the claims are often deliberately chosen to differ from those used in the description, and the description contains language that shifts the original meaning of those terms. Such applications will not only be harder to bring into line once description adaptation is called for, but will also carry a substantial risk under Article 123(2) EPC. Particular caution is warranted here.

Dr. Michael Rüberg, attorney at law at BOEHMERT & BOEHMERT in Munich with a focus on patent litigation, standing in his office.

New FRAND Guidelines of the 7th Civil Chamber of the Munich I Regional Court: More Structure, More Economics, No Safe Harbor

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The Munich patent chamber that decides the bulk of German SEP cases has set out, over 67 pages, how it assesses FRAND. Anyone pleading in Munich now knows which figures the chamber expects and which lines of defense it will not accept.

Background

The 7th Civil Chamber of the Munich I Regional Court, chaired by Dr. Oliver Schön and sitting with Dr. Florian Schweyer and Katalin Tözsér, issued new FRAND Guidelines dated 13 August 2026. They consolidate the chamber’s approach from its recent SEP decisions and add points so far discussed only in unpublished proceedings. The presiding judge explains the document by reference to a “clear need for a systematic and clearly structured presentation in practice” and to the aim of deciding cases within one year of filing.

The Guidelines supersede the orientation previously provided by the joint February 2020 notice of the 7th and 21st Civil Chambers on the handling of the competition-law compulsory-license defense under Huawei v ZTE, which was still closely tailored to the implementer working through the Huawei steps. The 21st Civil Chamber has been informed of the new guidance; given the level of detail, joint guidance was evidently not feasible. The Guidelines are not binding law and expressly reflect the position of the 7th Civil Chamber alone. Their practical weight follows from the number of cases pending there — some 40 to 50 new SEP cases a year — and from the announcement that the chamber will more often decide on the appropriateness of the claimant’s offer itself.

Procedure: “FRAND FIRST” Instead of a Safe Harbor

The most important procedural innovation is the option of a “FRAND FIRST” hearing: either party may request an early hearing devoted exclusively to FRAND issues, with submissions confined to a short brief of no more than 25 pages plus annexes. The chamber thereby continues the separation of infringement and FRAND observed since 2022 without abandoning the Munich procedural framework.

A genuine safe harbor is expressly rejected: a mechanism shielding an implementer from an injunction where it submits to binding arbitration would, in the chamber’s view, be incompatible with the patent holder’s interests and open to abuse. Providing security alone likewise does not prevent an injunction. The chamber sees no fundamental change in the establishment of the UPC Patent Mediation and Arbitration Centre in June 2026: mediation has been available at the Munich I Regional Court for more than 20 years and arbitration before bodies such as the ICC has long been available; all that has been added is a further option.

Willingness to License: External and Internal

The chamber distinguishes external from internal willingness. External willingness is assessed in a formalized way: the implementer must pay the undisputed portion of the royalty — measured by its own final offer — and, in defined circumstances, provide additional security. Under the chamber’s decisions, that includes, where the offers are far apart, security in the amount of the royalty falling due for one year of the license period under the claimant’s offer; and where the implementer is pursuing rate-setting proceedings abroad and that court has already proposed an amount, security in that amount. Only once external willingness is established does the chamber examine whether the SEP holder’s offer falls within the FRAND range; an implementer that nevertheless declines such an offer lacks internal willingness.

Determining the Range: Comparable Licenses First

The primary tool for determining the range is comparable licenses of the same licensor covering materially the same portfolio. The top-down approach serves as a cross-check in principle, and as the basis for an initial rate determination only where there is no established licensing practice or no suitable comparable agreement.

On comparability, the Guidelines provide in essence:

  • Agreements more than five years old are generally out of consideration.
  • Single-standard licenses are to be compared with single-standard licenses; multi-standard agreements generally cannot be unpacked, and cross-licenses are generally unsuitable unless the consideration can be valued independently.
  • Volume, duration and — exceptionally — geographic adjustments are possible; for exceptionally large volumes, discounts of up to around 30% are contemplated.
  • From the agreements submitted the chamber derives a median; the range extends 50% above and below it. Where a directly comparable agreement exists, the holder may increase the rate by no more than 15% — not cumulatively, but always measured against the original reference contract.

The top-down cross-check works with standardized device prices rather than actual selling prices (around US$170 for mobile phones) and with an aggregate royalty burden (around 8% for 5G). It presupposes a substantial share of the standard-relevant patents on the holder’s side; for mobile standards, around 1% may already suffice.

Court-appointed experts for rate determination are rejected: the appropriateness of the rate is a question of law and not amenable to expert evidence. Party experts, by contrast, may assist with calculations, the normalization of lump sums, options, releases, patent quality and top-down assumptions.

Specific Fields: Avanci 5G, Streaming, Past Use

The Guidelines then go on to discuss the chamber’s own decided cases in detail and to explain why it considered the terms at issue there appropriate. At least for the technical fields and market environments concerned (WiFi and HEVC licensing, mobile communications, automotive via the Avanci 5G pool, and “streaming as a service“) this yields very useful and in part highly concrete calculations; for the streaming environment, where no established licensing practice yet exists, the chamber offers an expressly non-binding illustrative calculation. It also addresses compensation for past use (“past release”), portfolio splitting, and a discount on the portfolios of Chinese companies (expressly presumed to be rebuttable, and likely open to challenge).

Anyone pleading in one of these fields will now find in the Guidelines a reliable indication of the orders of magnitude the chamber considers appropriate, and of the reasoning by which it arrives at them.

Practical Implications

SEP holders must prepare comparable licenses early and completely (licensor, portfolio, standard coverage, term, volumes) and keep increases over the reference contract within the limits set out in the Guidelines. The top-down cross-check with standardized device prices must always be run alongside.

Implementers must substantiate external willingness by payment: the undisputed portion measured by their own final offer, on a permanent basis, plus additional security where their own offer falls below the demand within the margins identified in the Guidelines. Relying solely on security, or on an offer to arbitrate, provides no protection against an injunction.

Both sides should bring in economic expertise early (but as party submissions, not in the expectation of a court-appointed expert).

Case planning: a “FRAND FIRST” hearing can save costs but forces an early, robust valuation; a party requesting one should already have its numbers ready within the page limit set by the Guidelines. After filing, it typically takes 9 to 12 months to reach an oral hearing.

Conclusion

As was to be expected, the chamber shifts the focus further still from conduct (the “behavioural approach”) to valuation: what decides a case in Munich is no longer only whether the implementer formally worked through the Huawei steps, but whether the holder’s offer falls within a transparently derived range. That creates predictability while raising the pleading burden on both sides. Whether the specific figures survive review by the Munich Higher Regional Court and the Federal Court of Justice remains to be seen.

Photo of Simon Lee, Patent Attorney at BOEHMERT & BOEHMERT in Munich

New referral to the En­larged Board of Appeal: G 1/26 on claim inter­pretation

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Technical Board of Appeal 3.3.05 of the European Patent Office has referred a fundamental question of claim interpretation to the Enlarged Board of Appeal. The referral, pending as G 1/26 (“Coated steel strips”), concerns the role the description plays when assessing added subject-matter.

G 1/26: Claim interpretation under Article 123(2) EPC

The referral asks how far the description may be used when interpreting a claim. The Enlarged Board addressed this question in G 1/24, but did so in the context of patentability. G 1/26 raises the same question in a different context: added subject-matter under Article 123(2) EPC. The issue is which of a claim’s possible interpretations must be tested against the original disclosure.

The underlying case

The referral arises from an opposition against a European patent for coated steel strips (EP 3 587 104), which originated from a second-generation divisional application. The disputed feature is a titanium-to-nitrogen ratio. Claim 1 as granted requires the ratio to be “in excess of 3.42”, with no unit specified. However, the description — like the parent and grandparent applications — defines the ratio by weight. The opponent argues that omitting the unit broadened the claim beyond what was originally disclosed.

Three approaches to claim interpretation  with differing outcomes

The Board identifies three approaches in the case law following G1/24 on how the description is used in claim interpretation. In the case at hand, these three approaches lead to two different outcomes.

Approach 1: Description used only to determine the skilled person

Under this approach, the description merely serves to establish the technical field and the common general knowledge. Read that way, the disputed ratio could be a molar ratio. Since this possibility was not originally disclosed, there would be added subject-matter; Article 123(2) EPC would be infringed.

Approach 2: No broadening or limitation of the claim based on the description

Here too, the unitless ratio covers a molar ratio as a possible reading, resulting in added subject-matter and an infringement of Article 123(2) EPC.

Approach 3: Holistic interpretation based on the patent specification as a whole

This approach allows the specification to narrow the claim. Since the relevant passages of the description define the ratio by weight, the feature is interpreted narrowly as a weight ratio. Under this approach, Article 123(2) EPC is satisfied.

An additional question on the admissibility of referrals

The Board also refers a separate question on the admissibility of referrals. In its view, a referral should be admissible where the point of law arises from the case and it is procedurally reasonable to decide that point first. What should not be required is ruling out every other objection to the patent beforehand.

Practical implications

The referral concerns a fundamental question of everyday patent practice. How a claim is to be construed, and which readings must find support in the original disclosure, often decides whether a patent survives. If the Enlarged Board finds the referral admissible, its answer will shape examination and opposition practice before the EPO. The proceedings will be worth following closely.

The full wording of the referred questions is available on the website of the European Patent Office. Closely linked to the questions raised here is referral G 1/25 on description adaptation, which addresses whether and to what extent the description must be aligned with amended patent claims.

 

Author: Patentanwalt / European Patent Attorney / Representative before the UPC
Portrait of Stella Euchner, Attorney at Law at BOEHMERT & BOEHMERT

The German Distance Learning Protection Act (FernUSG): Current Case Law and Practical Impacts

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The German State Central Office for Distance Learning (ZFU) is also of central importance for modern online formats and B2B offerings.

In its ruling of June 12, 2025 (III ZR 109/24), the Federal Court of Justice (BGH) significantly expanded the scope of the German Distance Learning Protection Act (FernUSG) to include digital training, coaching, and mentoring services, while also clarifying that the Distance Learning Protection Act is not limited to traditional distance learning courses. The sole determining factor is whether the statutory elements are met. At the same time, the BGH confirmed that the scope of protection is not limited to consumers, but that contracts with companies, freelancers, and the self-employed also fall under the Distance Learning Protection Act. It follows that the licensing requirement of the German State Central Office for Distance Learning (ZFU) is also of central importance for modern online formats and B2B offerings.

When does distance learning exist within the meaning of the Distance Learning Protection Act?

According to Section 1(1) of the Distance Learning Protection Act, distance learning is the provision of knowledge and skills on a contractual basis for a fee, in which the instructor and the learner are exclusively or predominantly physically separated (No. 1) and the instructor or their representative monitors the learner’s progress (No. 2).

The scope of application of the Distance Learning Protection Act is interpreted very broadly by case law: a physical separation is deemed to exist if more than 50 percent of the program is conducted as asynchronous instruction. For the monitoring of learning progress, the mere possibility of (one-time) individual questions or feedback is sufficient; actual use is not required. The law does not stipulate minimum content requirements or a specific course duration. Online coaching and B2B training are also expressly covered.

Requirement for Approval

If distance learning exists in the sense described above, approval by the German State Central Office for Distance Learning (ZFU) is generally required (Section 12(1) Distance Learning Protection Act).

The only exceptions to the licensing requirement are:

  • Free offerings
  • Hybrid learning formats with more than 50 percent in-person component (extent of in-person phases relative to the total duration of the course)
  • Purely informational events (because there is no systematic assessment of learning outcomes)
  • Programs for leisure activities or entertainment (Section 12(1) Distance Learning Protection Act).

For many providers of digital training, undergoing such licensing procedures with the ZFU involves significant time and financial resources.

Legal and practical risks in the absence of accreditation

If the required ZFU accreditation is missing, the contracts are void (Section 7(1) Distance Learning Protection Act), meaning that participants are then entitled to a refund of payments already made.  In addition, fines of up to 10,000 euros may be imposed (Section 21(2) Distance Learning Protection Act), as well as a significant risk of receiving a warning notice under competition law, since a violation of the licensing requirement constitutes an illegal commercial practice under the German Act against Unfair Competition (UWG). In the worst-case scenario, training programs offered without the required accreditation may be prohibited.

The actual risk that companies without the required accreditation will be fined is rather low. However, a warning notice under competition law represents the greatest actual risk.

Recommendations for Providers of Digital Training

Given this very broad interpretation of the German Distance Learning Protection Act, providers of digital training programs without ZFU accreditation would be well advised to conduct a legal review of existing formats and make strategic decisions early on to avoid payment and warning risks.

The following strategies, among others, are recommended:

  • Conducting an inventory, including recording all existing training courses and verifying whether learning assessment is provided
  • Clarifying the licensing requirement or adapting the training concept, e.g., hybrid events with more than 50 percent in-person participation or live offerings without recording and feedback options
  • Review and adapt the wording of contracts and terms and conditions
  • Implement compliance processes, i.e., regularly review offerings for compliance with the Distance Learning Protection Act particularly in the event of changes regarding the method of knowledge transfer

At the same time, initiating a ZFU accreditation process may be advisable to demonstrate, in the event of a dispute, that the provider has not remained inactive.

 

FCJ “FRAND Objection III” and recent case law of the German District Courts: Further Clarification of Willingness and Security Requirements

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Recent Case Law of the German District Courts

Recent case law from the Munich patent courts has further refined the requirements for raising a competition law-based FRAND defence against injunctive relief based on standard-essential patents. Several decisions of the Regional Court of Munich I in 2025 and 2026 address in particular the assessment of an implementer’s willingness to take a license, the role of partial payments and security, and the determination of a permissible FRAND licensing range on the basis of comparable license agreements.

In its judgment of 8 January 2026 (Regional Court of Munich I, case no. 7 O 5007/25), the court emphasized that the assessment of willingness to license depends not only on formal declarations but also on the implementer’s concrete conduct in negotiations. In particular, the court considered it highly relevant whether the implementer pays at least an undisputed portion of the licence fee or provides adequate security, as such conduct may demonstrate that the implementer is not engaging in hold-out behaviour.

In another judgment of 5 February 2026 (Regional Court of Munich I, case no. 7 O 7655/25), the same chamber further elaborated on its approach to determining a FRAND royalty corridor based on comparable licence agreements. According to the court, comparable agreements may serve as a benchmark for identifying a permissible range of licence rates within which an offer will generally be considered FRAND-compliant.

Similarly, in its decision of 22 January 2026 (Regional Court of Munich I, case no. 7 O 4102/25) concerning patents allegedly essential to the H.265/HEVC video coding standard, the court rejected a competition law compulsory licence defence and held that the defendant had not demonstrated conduct sufficient to establish a successful FRAND defence.

Earlier, the Regional Court of Munich I had also addressed the international dimension of SEP disputes. In its judgment of 26 November 2025 (Regional Court of Munich I, case no. 21 O 12112/25), the court held that the competition law assessment of FRAND obligations with respect to German patents must, in principle, be carried out by German courts. It therefore considered attempts to obtain a court-ordered “interim licence” from a foreign court affecting German patents to be incompatible with the territorial nature of patent rights.

Taken together, these decisions illustrate how German first-instance courts are increasingly translating the framework established by the Court of Justice of the European Union in Huawei v ZTE into concrete procedural and economic criteria. Against this background, the recent judgment of the German Federal Court of Justice is of particular significance.

FCJ “FRAND Objection III”

On 27 January 2026 (KZR 10/25), the Bundesgerichtshof dismissed HMD Global Oy’s appeal in the dispute with VoiceAge EVS GmbH. The judgment confirms the decisions of the Munich lower courts and further refines the standards governing FRAND defences against injunctive relief based on standard-essential patents.

The legal framework remains Article 102 TFEU and the principles developed by the Court of Justice of the European Union in Huawei v ZTE.

Background and procedural history

VoiceAge asserted claims based on a European patent declared essential to the EVS telecommunications standard. HMD argued that enforcement of the injunction would constitute an abuse of dominance, as it had been willing to take a licence on FRAND terms.

Both the Regional Court of Munich I and the Higher Regional Court of Munich rejected this defence, finding that HMD had not demonstrated sufficiently consistent willingness. The appeal raised, in particular, the question whether the Huawei framework must be applied in a strict chronological sequence and how security is to be assessed.

Overall assessment of negotiation conduct

The FCJ confirms that the Huawei obligations do not establish a rigid step-by-step sequence. Courts must assess the entire course of negotiations. An initial declaration of willingness is not decisive if subsequent conduct undermines its credibility.

Delays, inconsistent positions or tactical reservations may call into question the seriousness of the implementer’s engagement. The Court thus endorses a contextual evaluation focusing on coherence and continuity.

Substantive requirements for willingness

According to the judgment, willingness must be substantive rather than merely declaratory. It requires a clear and unconditional expression of intent to take a licence, combined with timely and reasoned engagement with the SEP holder’s offer and meaningful counter-offers.

The implementer bears the burden of demonstrating such conduct. Remaining ambiguities may operate to its detriment.

The role of security

The FCJ attaches particular importance to the provision of adequate security for ongoing use. In the case at hand, the security offered by HMD did not even fully correspond to its own counter-offer. On that basis alone, the Court rejected the FRAND defence without needing to examine in detail whether the claimant’s offer complied with FRAND.

Security therefore functions as an independent indicator of seriousness in negotiations.

No referral to Luxembourg

The Court declined to refer further questions to the Court of Justice of the European Union, considering the legal framework established in Huawei v ZTE sufficiently clear.

Practical implications

The decision confirms that FRAND defences in Germany remain demanding. Companies should ensure that willingness to license is clearly expressed and consistently reflected in their conduct. Negotiation correspondence is likely to be scrutinised in detail.

In addition, security arrangements should be considered at an early stage. Inadequate security may undermine the defence irrespective of the substantive assessment of licence terms.

Conclusion

In “FRAND Objection III”, the FCJ continues its conduct-focused approach in SEP cases and clarifies the substantive requirements for willingness and security. What ultimately matters is credible and economically supported readiness to conclude a licence agreement, rather than formal compliance with individual procedural steps.

 

BSH before the UPC and the German courts – first applications, an emerging tendency and open guiding questions [Update on BSH case law]

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Update on the article “BSH as a Gateway to Cross-Border Patent Enforcement: The Regeneron/Bayer vs Formycon and Onesta vs BMW Cases” from December 1, 2025

The CJEU’s decision in BSH v Electrolux (C-339/22) has by now been expressly taken up in several decisions of the UPC, in particular with regard to the question whether, where jurisdiction is based on the defendant’s domicile, the UPC may also rule on alleged infringements relating to non-UPCA validations of a European patent, for example in Spain, the United Kingdom or Switzerland.

An early and frequently cited reference can be found in the order of the Milan Local Division of 8 April 2025 in Alpinestars v Dainese, in which the court adopted the CJEU’s reasoning and considered the UPC’s jurisdiction as a court of a Member State within the meaning of the Brussels Ia framework also with respect to non-UPCA validations. In a comparable manner, the Paris Local Division in IMC Créations v Mul-T-Lock examined and affirmed jurisdiction also with regard to the Spanish, UK and Swiss parts of the bundle patent, based on EU jurisdictional principles.
The practical reach of the BSH approach became particularly visible in interim relief proceedings in Dyson v Dreame (Hamburg Local Division, 14 August 2025), where the injunction order also covered Spain. At the same time, these decisions show that the UPC does not apply an automatic or schematic extension of jurisdiction, but regularly requires a concrete and at least plausible factual submission concerning the alleged infringing acts in the respective third state.
The treatment of validity challenges outside the UPC territory is, so far, handled differently and on a case-by-case basis. Academic commentary discusses in this context whether, and to what extent, such challenges should be addressed at the jurisdictional stage or only at the level of the merits.

In Onesta v BMW before the Munich Regional Court I, infringement of, inter alia, US patents is asserted. The jurisdictional argumentation draws on considerations that have gained prominence in the European context through BSH, but transfers them to a setting involving third-state patents outside Europe.

On the US side, Judge Alan Albright (W.D. Texas) issued an ex parte Temporary Restraining Order (TRO) on 16 December 2025, which was subsequently extended and, on 13 January 2026, converted into an Anti-Suit Injunction (ASI) in favour of BMW. The purpose of these measures was to prevent the continuation of the German proceedings insofar as they concern the US patents. Appeals were lodged against the ASI, and the Federal Circuit granted interim relief, leaving the procedural situation open for the time being.

Conclusion

UPC case law now shows an identifiable tendency to rely on BSH as a viable basis for extended international jurisdiction, including with respect to non-UPCA validations of European patents. However, the contours of this approach will continue to be shaped, in particular by the treatment of validity challenges and by constellations involving third-state patents. Onesta v BMW further illustrates that extending such jurisdictional reasoning to third-state patents entails significant conflict potential with foreign procedural instruments and brings issues of international procedural coordination increasingly to the fore.

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

Greenwashing or permissible environmental claims?

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Status of the implementation of the Empowering Consumers Directive (EmpCo Directive) in Germany
The European Union is pursuing the goal of better protecting consumers from misleading environmental and sustainability claims with the Empowering Consumers Directive (Directive (EU) 2024/825, or EmpCo Directive for short).

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

CJEU specifies protection for works of applied art

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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.

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

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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.

Portrait of Stella Euchner, Attorney at Law at BOEHMERT & BOEHMERT

Brexit update: Five-year grace period for UK clones ends on December 31, 2025

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On December 31, 2025, the five-year grace period for so-called UK clone trademarks will end. These are national UK trademarks that automatically emerged from registered EU trademarks in the course of Brexit and were protected as additional comparable UK trademarks (same sign, same goods and services, same filing/priority date). The purpose of this conversion from EU to UK trademarks was to ensure trademark protection in the United Kingdom after Brexit.

Background

In accordance with the Withdrawal Agreement concluded between the EU and the UK, the UK left the EU on February 1, 2020. The transition period provided for in that agreement, during which EU law remained applicable to and in the UK, ended on December 31, 2020. During this transition period, use of the UK clone registrations within the EU was sufficient as proof of genuine use. However, since January 1, 2021, use in the United Kingdom is required to maintain rights to UK clones, and use within the EU is no longer sufficient.

Impact on practice

As a result, trademark owners who have not genuinely used their UK clones in the United Kingdom during the period from January 1, 2021, to December 31, 2025, now run the risk of having their UK clones canceled in whole or in part by third parties by way of cancellation requests. The (partial) cancellation of a trademark due to non-use would leave trademark owners unable to take enforcement action before the UK courts and unable to rely on their UK clone registrations in opposition or invalidation proceedings before the UK Intellectual Property Office (UKIPO).

Practical advise

In anticipation of this, it is essential that trademark owners carefully and promptly review their trademark portfolios to determine the extent of their past and present use within the UK, and, if necessary, develop strategies for future use. Where such rights have not been used on the UK market, but continued trademark protection is still desired (in whole or in part), it is advisable to commence (genuine) use of the UK clone registrations in the UK as soon as possible and/or filing new national UK trademark applications.

However, if use in the UK is not desired, it is advisable, at least for cost reasons, to take no further action but to wait and see whether third parties file a cancellation request based on non-use. Proactively abandoning the cloned UK trademark is not recommended because it incurs unnecessary costs. If a third party files a non-use cancellation request without first warning the trademark owner of such an intention, the UKIPO will not re-imburse the applicant for any costs. This principle reduces the risk of being attacked without warning. However, if a warning is issued, the trademark owner can, of course, (voluntarily) delete the cloned UK trademark within the set period. In contrast to Germany, in the UK it is extremely difficult to claim a warning fee for the warning letter. If the trademark owner fails to delete the trademark in time despite the warning letter and revocation proceedings are actually initiated, costs may be imposed on them. However, it is of course questionable whether a decision on costs in favor of the applicant would been forceable in an international context or whether the effort involved would be worthwhile, which ultimately also reduces the risk of a negative cost burden for trademark owners.