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

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.

 

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

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).

Read more
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.

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

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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.

New Referral G 1/25 to the Enlarged Board of Appeal of the EPO

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Must the description be adapted to amended patent claims?

Summary

On July 29, 2025, the Technical Board of Appeal of the European Patent Office issued an interlocutory decision in case T 697/22. In this decision, three questions were referred to the Enlarged Board of Appeal (EBA) to clarify whether the description of a European patent (or patent application) must be adapted to amended claims.

Background

The decision is based on appeals lodged by both the patent proprietor and the opponent against the first-instance decision in opposition proceedings. The Board concluded, in line with the Opposition Division, that the claims submitted as an auxiliary request were allowable. However, the proprietor had not filed an adapted description corresponding to these claims. The Board identified contradictions between the claims and the current description and rejected a later attempt to submit an amended description as inadmissibly late.
This raises the central issue: Do contradictions between amended claims and the description prevent the grant of a European patent?

Current practice

During examination, the EPO typically requires the description to be brought into conformity with amended claims. This practice is supported by long-standing case law, which holds that the description must be consistent with the claims. The legal basis cited varies, though reference is often made to Article 84 EPC, which requires claims to be clear and supported by the description (see, for example, T 1024/18).
However, recent Board decisions – most notably T 56/21 – have challenged this approach. According to these decisions, the EPC does not impose a strict requirement to adapt the description to amended claims, particularly if the claims are clear in themselves. In this view, examples in the description that fall outside the scope of the amended claims do not affect the clarity or support of the claims.

Referred questions

Given the divergence in recent case law and the relevance of the issue, the referring Board has put the following three questions before the EBA:
1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application
All three questions ultimately seek to determine whether the description must be adapted to amended claims to eliminate inconsistencies.

Outlook

The EBA will first need to decide whether it intends to address all three questions, although only the answer to question 1 is directly relevant to the case at hand. Nevertheless, a different outcome in response to question 3 seems unlikely.
The decision will be of significant importance for applicants: adapting the description following claim amendments is often a time-consuming and costly exercise. It also carries the risk of negatively impacting the later interpretation of the patent before national courts, or limiting flexibility in subsequent validity proceedings.
Of particular interest will be how this referral aligns with the EBA’s recent decision G 1/24 (see our article). According to that decision, the description and drawings must always be taken into account when interpreting patent claims—even during examination and opposition proceedings. This gives renewed prominence to the role of the description and may lead to a more critical assessment of inconsistencies between the claims and description.
We will continue to monitor developments and are happy to advise on the best approach in light of this evolving legal landscape.

New decision G 1/23 of the Enlarged Board of Appeal of the EPO

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Publicly available product is prior art, even when not reproducible

In decision G 1 /23 issued on July 2, 2025, the Enlarged Board of Appeal of the European Patent Office was confronted with the question of whether a product put on the market is considered prior art regardless of enablement. In particular, the referral asks whether the non-enabling prior use of a product excludes the composition of the product, and also the product as such, from the prior art.

Key takeaways of the decision

  • Availability is sufficient: A product that was made publicly available before the filing date (e.g. through sales) is considered part of the prior art, even if it could not be technically analyzed or reproduced at that time.
  • No reproducibility requirement: Article 54(2) EPC does not require that a skilled person must have been able to reproduce the product before the filing date. Major impact on inventions in the fields of chemistry and materials science, where the internal composition is often hard to detect.
  • Possible impact also on computer-implemented inventions, where it is rather difficult to verify the exact code and algorithms or for prototypes delivered to clients under agreements forbidding reverse-engineering or internal manipulation.

Particulars of the case

The case originated from an opposition by Borealis GmbH (Opponent) against the European Patent No. 2 626 911, held by Mitsui Chemicals, Inc. and Mitsui Chemicals ICT Materia, Inc. (Patent Proprietors), concerning a solar cell sealing material.

At the center of the dispute was the commercially available product “ENGAGE® 8400,” a complex polymer used for sealing in solar modules. Although this product had been made commercially available before the priority date of the opposed patent, it was not possible to fully analyze its chemical composition and thus to reproduce it by the relevant date.

Against this background, it was controversially discussed whether such a (disclosed but allegedly non-reproducible) product could be considered prior art when assessing inventive step.

In previous decision G1/92, it had been ruled that “The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed “and reproduced” by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition”. There, the Enlarged Board of Appeal held that where it is possible for the skilled person to discover the composition or the internal structure of the product “and to reproduce it” without undue burden, then both the product and its composition or internal structure become state of the art”. This lead to the possibility of excluding from the prior art non-reproducible disclosures, including non-reproducible public prior uses.

The case was referred to the Enlarged Board of Appeal to seek clarification as to whether the non-enabling prior use of a product excludes the composition of the product from the prior art or whether it also excludes the product per se.

This is of significance, because if the product per se is excluded it cannot be used as a starting point for an inventive step analysis. The referral also seeks clarification over the definition of enablement with respect to the prior use of a product, and particularly whether “enablement” requires that the skilled person be able to fully analyse and reproduce the exact same product.

The decision and its aftermath

In new decision G 1/23, the Enlarged Board of Appeal sets the criterion that the chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.

Accordingly, while decision G1/92 is not being overturned, it is being partly amended in that the “reproducibility requirement” is no longer used when assessing whether a public prior use is deemed publicly available and hence belongs to the prior art.

In reaching this decision, the Enlarged Board of Appeal emphasized that the prior art refers to abstract technical teachings or information, which, once made public, do not disappear even if the physical carrier (e.g., the product itself) is no longer available. Problems in proving what was disclosed by a product (e.g., if it is no longer available) are issues of evidence, not reasons to deny its prior art status.

While a non-reproducible product now belongs to the state of the art and could potentially destroy novelty, it does not necessarily follow that it will be equally relevant to assessments of inventive step. As the Enlarged Board of Appeal explicitly found, the skilled person may still disregard such a product as relevant prior art for good reason. This is because the assessment of inventive step depends on the context and is influenced by numerous factors, including the general knowledge of the skilled person, the analyzable properties of the product and practical limitations.

This triggers the question of whether analysis of a chemical product, as considered in G 1/23. may be handled on the same footing as analysis of a (compiled) software product available on the market in terms of determining whether its internal functioning (e.g. underlying algorithm) “can be analysed”. It should be borne in mind that decompiling a software product is allowed in the EU only under special circumstances, since reproduction and translation of any code form (i.e. de-compilation) is generally seen as an exclusive right of the copyright owner (see CJEU October 6, 2021, ECLI:EU:C:2021:811 (Top Systems/Belgian State) on Directive 2009/24/EC). This may influence the assessment of what the skilled person might be expected to do. Notably, cooperation and license-agreements may also explicitly ban decompiling and reverse-engineering. By contrast, in chemistry, analysis of a chemical product typically is considered as belonging to the standard abilities of the skilled person and is not legally restricted.

Impact on Practice

  • For examination proceedings: Novelty can now also be destroyed by products whose exact composition cannot be reconstructed or reverse-engineered – the sole decisive factor is their public availability.
  • For patent applicants: Exercise caution when marketing innovative products before the filing date of a first patent application, even when they are difficult to analyze, as they may also be considered novelty-destroying. Early filing of the patent application has thereby become even more important, as there will be even less chances to still a product once put on the market.
  • For search and opposition: Pay increased attention to actual products on the market, regardless of their complete technical disclosure.
  • For licensing agreements, cooperations and delivery of customer prototypes, especially for mechanical and software products: Try including in the agreement a clause explicitly forbidding de-compilation and reverse-engineering.

New Decision G 1/24 – Claim Interpretation at the European Patent Office

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On 18 June 2025, the Enlarged Board of Appeal of the European Patent Office (EPO) issued the long-awaited decision G 1/24, which is expected to have significant implications for claim interpretation under the European patent system.

According to Article 69(1) EPC, the extent of protection conferred by a European patent is determined by the claims, but the description and drawings are to be used to interpret the claims. The Unified Patent Court (UPC) has also adopted this principle[1]. Consequently, the description and drawings are always to be considered when interpreting the claims in the context of assessing potential patent infringement and invalidation.

In contrast, the EPO’s Boards of Appeal have so far been divided in their case law concerning whether the description and drawings must be taken into account when assessing the patentability of an application or the validity of a patent in opposition proceedings. Some decisions held that the claims alone should be interpreted if they appear clear on their face –even if the interpretation contradicts the description.

This divergence had serious consequences in certain cases. Notably, in decisions T 1473/19 (30 September 2022) and T 1127/16 (18 February 2021), European patents were revoked due to a missing comma in the claim wording. The deciding boards took the view that claims must be interpreted in isolation if they are deemed clear, and that it was not permissible to modify their meaning by reference to the description – even when the result conflicted with it. In these and other decisions, the Boards of Appeal refused to consult the description and drawings to interpret otherwise unambiguous claims. In contrast, other decisions allowed such reference to the description and drawings to aid in construing the subject-matter.

This inconsistency also became evident in appeal case T 0439/22. In an interlocutory decision dated 24 June 2024, the board was confronted with the issue of whether a term in the main claim should be interpreted according to its narrower, customary technical meaning (without reference to the description) or according to a broader definition given in the description. In the former case, the claimed subject-matter was considered novel; in the latter, it was not. The question of patentability therefore hinged on whether the claim term could be interpreted in isolation or only in light of the description.

Unable to resolve the legal question itself, the board referred the matter to the Enlarged Board under Article 112 EPC, which has the task of ensuring uniform application of the law and settling important points of legal principle.

With its decision G 1/24 of 18 June 2025, the Enlarged Board has now settled the issue: the description and drawings must always be taken into account when interpreting patent claims when assessing the novelty and inventive step, also in examination and opposition proceedings.

This decision sets a paradigm for the examination of the novelty and inventive step before the EPO as well as for the opposition proceedings. Future decisions on novelty and inventive step must consult the description and drawings – an interpretation based solely on a claim wording  should no longer occur.

Ultimately, this decision harmonises the EPO’s claim interpretation practice with that of national courts across Europe and the Unified Patent Court.

On the practical side, the decision by the Enlarged Board of Appeal seems to pave the way for an even harsher check of the need to adapt the description to the claims during examination before the EPO.

For the daily practice, this decision means in particular:

  • When drafting a new application, the utmost care is required. Terms, expressions, and parameters used in the claims should be specifically supported by definitions, explanatory clarifications, and fallback positions in the description (and, where appropriate, in the drawings).
  • The description should be drafted in a way that allows for the broadest possible interpretation of the claimed subject-matter, without compromising consistency with the claims.
  • Special attention must be paid to ensuring that the embodiment intended by the inventor or applicant – or the preferred technical implementation – clearly falls within the scope of interpretation of the claimed subject-matter.

BOEHMERT & BOEHMERT has already implemented the new decision in practice and will be happy to consult you further on this topic.

 

[1] UPC decisions CoA_335/2023 / App_576355/2023 of 26 February 2024 and CoA_1/2024 / ApL_8/2024 of 13 May 2024

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

A sandal remains a sandal – also in the opinion of the German Federal Court of Justice

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Summary of the latest decision of the German Federal Court of Justice (BGH) on the copyright protection of Birkenstock sandals

On February 20, 2025, the Federal Court of Justice ruled in a landmark decision that the world-famous Birkenstock sandals do not enjoy copyright protection. The central question was whether the design of the popular sandals is protected as a work of applied art within the meaning of Section 2 (1) no. 4 of the German Copyright Act (UrhG). The District Court in Cologne had still assumed that the sandals were protected by copyright, but the Higher Regional Court in Cologne then denied this. These first-instance decisions had caused great uncertainty in the shoe-producing industry.

Basis of the decision

The plaintiff, which distributes various models of sandals as part of the Birkenstock Group, wanted to ensure that the sandals enjoy copyright protection as works of applied art – primarily to prevent cheaper copies. It argued that the special sole cut and choice of materials had resulted in an iconic and typical design, which, as a creative achievement, must be protected by copyright.

No sufficient creativity

However, the BGH does not share this view, as already became apparent in the oral hearings: the design of the Birkenstock sandals is not sufficient to be considered a work of applied art.

Copyright protection requires a certain level of creativity that reveals the individuality of the author. There must be a scope of creative design that has been used in an “artistic way”. Purely technical work using formal design elements cannot be protected. In simple words: what is required is a creative design that goes beyond the functionality. However, according to the BGH, this is precisely not the case here.

Functionality instead of art

The BGH emphasized that the existing scope for design had not been artistically exhausted in this case, but that the design of the Birkenstock sandals was primarily geared towards functionality. The sandals were not designed as works of art, but as practical “everyday objects”. Therefore, the simple and functional design of the sandals does not meet the requirements for copyright protection.

Impact of the decision

The decision of the BGH has far-reaching consequences for the question of the extent to which everyday objects can be protected by copyright. It shows that copyright protection in Germany is only granted for works that reach a sufficient creative level and do not merely have functional features.

Design protection instead of copyright?

However, Birkenstock announced that it would continue to take legal action against imitators. This is likely to be difficult after the BGH-decision. Although there is still design protection, the deadlines for Birkenstock sandals have already expired a long time ago: the term of protection for a registered design lasts up to 25 years maximum from the filing date, but the sandals were already designed in the 1970s. Therefore, copyright protection, which only expires 70 years after the death of the author, would have been more advantageous for Birkenstock…