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…

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

Landmark ruling of CJEU with significant impact on european patent litigation strategies

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Earlier this week, the CJEU has issued its long-awaited ruling in the matter of BSH vs Electrolux (CJEU, judgement of February 25, 2025, C-339/22), thereby significantly expanding the possibilities for both the UPC and national courts in the EU Member-States to grant cross-border injunctions and decide on matters of patent infringement in countries outside the respective court’s own territory.

In its final and non-appealable ruling, the CJEU responded to several questions on the interpretation of the Brussels I-bis Regulation (“BR”). These were raised by a Swedish Court when confronted with BSH’s request to decide on the alleged infringement by Electrolux of all national parts of its European bundle patent, including in a non-EU state. The Swedish court was principally tasked to render a decision on these requests, considering Electrolux is a Swedish company and that Art. 4 (1) BR grants the courts of the EU-Member States general jurisdiction over all infringing acts committed by a person or company domiciled in their respective territory (irrespective of where the act occurs).

However, Art. 24 (4) BR limits such jurisdiction for cases concerning the “validity of patents”. So far, and following a number of earlier CJEU rulings (in particular: Roche v. Primus, Solvay v. Honeywell and GAT v. LUK), this limitation had been understood to apply as soon as a validity challenge had been brought by a defendant in any of the foreign countries concerned. As this challenge is generally available to any defendant, the above understanding and corresponding court practice led most patent owners in the past years to limit their litigation at a national court in the EU (or now also at the UPC) to infringing acts having occurred in the actual territory of the respective court.

The CJEU has now clarified the scope of Art. 24 (4) BR in relation to patent infringement cases. In the view of the CJEU, the “validity of patents” mentioned in Art. 24 (4) BR only concerns validity challenges that would lead to an erga omnes nullification of the attacked patent. These challenges still need to be brought in the courts of the patent concerned, e.g. at the Bundespatentgericht in case of a German validation of an EP.  In view of the CJEU, Art. 24 (4) BR does not however apply to an inter partes validity defense raised against a patent infringement claim. Consequently, even if an invalidity challenge was brought in a foreign country, Art. 4 (1) BR would still allow the court of the EU Member-State in which the infringement case has been brought to rule on the infringement in such foreign country, by assessing and taking into account the validity challenge in the foreign country for its inter partes decision.

This ruling is expected to have significant implications for global patent litigation and corresponding strategies, only some of which are:

  • The patent owner may now sue any EU-based defendant in the national courts of its domicile for patent infringement in any country (worldwide), including the request for an injunction and/or damages. Obviously, the question of infringement would then need to be determined on the basis of the applicable foreign law, which could then lead to the necessity of multi-national litigation teams, expert opinions on foreign law, as well as some possible “twist and tweaks” in relation to how a European court may assess and apply foreign (e.g. US) law.
  • Similarly, the owner of a non-opted-out (or opted-in) EP may now sue any defendant domiciled in a UPC member state at the UPC in relation also to EPC states which are not part of the UPC system. In fact, there is already some early precedent in this regard (even predating the CJEU’s decision), namely the LD Dusseldorf’s decision of 28 January 2025 in the matter of Fujifilm vs. Kodak, UPC_CFI_355/2023). Here, the UPC accepted jurisdiction also in relation to alleged infringement of an EP in the UK.
  • While granting broad jurisdiction to national courts and the UPC, the CJEU has accepted that an invalidity challenge in a foreign country is to be considered by the infringement court and could also lead to a potential stay of the infringement case. For defendants, this could imply the need to bring multiple invalidity attacks in national courts at the same time, if patent owners decide to bring an infringement action in only one national court for infringement in various countries. Depending on the scale of such action and the number of countries involved, this could put significant economic pressure upon defendants, who obviously will need to advance most of these costs.
  • One of the big questions left open by BSH vs. Electrolux is the precise scope of the concept of “domicile”, including the highly relevant question of whether joint defendants could be sued using the aforesaid regime, if only one of them does in fact have a place of business in the relevant EU Member-State. While earlier case law of the CJEU provides for some guidance in this regard, there will certainly be many attempts to broaden this concept and hopefully some clarifying decisions in the months and years to come.
  • Lastly, the question of enforcement lingers upon the decision by the CJEU. In case that local authorities of a state, which the decision on infringement extends to, but is not the state of the court seised, are needed to enforce the decision, it is likely that there will be significant pushback by that state, inferring jurisdictional/judicial overreach (especially in the case of a non-EU or non-EPA third party state). Where, however, no help from local authorities of a state, to which a decision extends, is needed, such possible “enforcement-gap” should not be of issue.

For patent owners and possible defendants alike, this is a significant development  that has to be taken into account when planning enforcement strategies or considering the corresponding risk of doing business in the EU. While the discussion of possible further implications of this landmark ruling is evolving rapidly, we will provide further updates within due course.

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

EU Commission confirms: “Emmentaler” remains a generic term

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The cheese is not recognized as a protected designation of origin.

On January 23, 2025, the EU Commission ruled that the term “Emmentaler” will not be recognized as a protected designation of origin within the European Union. Instead, it confirmed that the term is a generic name that may be used freely. BOEHMERT & BOEHMERT successfully represented an international dairy consortium in this case, preventing Switzerland from monopolizing the name.

Background: Dispute Over Origin Protection

In March 2024, Switzerland applied for the international registration of the term “Emmentaler” as a protected designation of origin under the Geneva Act of the Lisbon Agreement. The goal was to reserve the name exclusively for cheese produced in the Swiss Emmental region. However, the EU Commission’s Directorate-General for Agriculture and Rural Development rejected the application, arguing that the term is no longer historically or culturally limited to Switzerland.

EU Commission’s Decision

In its Implementing Decision (EU) 2025/107, the EU Commission justified its ruling by stating that “Emmentaler” has been produced in several EU countries since the 19th century. Three protected geographical indications within the EU already include “Emmentaler” or a linguistic variation of the name, referring to cheese produced outside Switzerland:

  • “Allgäuer Emmentaler” (PDO), produced in Germany,
  • “Emmental français est-central” (PGI), produced in France,
  • “Emmental de Savoie” (PGI), also produced in France.

Implications: Legal Certainty and Fair Competition

The EU Commission’s decision ensures legal certainty and prevents market distortions, as the term “Emmentaler” has long been recognized internationally as a type of cheese with characteristic holes—rather than as an indication of Swiss origin.

Dairies in the EU and beyond retain their production freedom. Manufacturers may continue using the name as long as they comply with national production regulations, such as Germany’s Cheese Ordinance. Protecting the term as a PDO would have led to significant adaptation costs and market confusion. In Austria alone, approximately 14,000 tons of Emmentaler are produced annually—more than in Switzerland itself.

By classifying “Emmentaler” as a generic term, the EU Commission also strengthens the position of other countries seeking to defend traditional names against excessive protection claims. Furthermore, the case highlights the importance of strategic legal representation that takes into account both international agreements and European regulations, as well as industry-specific market and consumer perceptions.

B&B Partners obtain patentee-friendly decisions from the Boards of Appeal of the European Patent Office

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Rule 80 EPC – Multiple independent claims for defending a patent in opposition proceedings

Within a short period of time, the Boards of Appeal of the European Patent Office have issued two parallel decisions that were obtained by partners of BOEHMERT & BOEHMERT in favour of our clients. Both decisions were published on 14 October 2024 and in both cases the interesting legal question is whether R. 80 EPC precludes the limited defence of a European patent in opposition proceedings with a set of claims that, instead of an independent claim of the granted patent, contains several independent claims that constitute different limitations of the independent claim of the granted patent.

Appeal T0123/22 – several independent claims limited by different features from the description

In the appeal case T0123/22, patent attorney Dr. Daniel Herrmann succeeded in setting aside the first-instance decision of the Opposition Division, according to which European Patent EP 2822613 B1 was revoked on the basis of R. 80 EPC. The Opposition Division had wrongly assumed that R. 80 EPC precluded a defence of the patent in a limited version by replacing an independent claim of the granted version with several independent claims, each containing different features from the description for the purpose of limitation. This decision was set aside by the Board of Appeal in a decision containing a catchword and remitted to the Opposition Division.

The Board of Appeal first clarified that R. 80 EPC is a purely substantive norm concerning the allowability of an amendment in opposition proceedings. According to the Board, the only relevant factor in assessing the requirement of R. 80 EPC is whether the amendment made is occasioned by a ground for opposition. In this regard, it was necessary to examine whether the amendment should be considered a genuine attempt to address a ground for opposition. In doing so, the board referred to the cited decision T0750/11. The circumstances of the individual case had to be taken into account. In the headnote and reasons, the board emphasised that R. 80 EPC does not provide any general guidelines as to how a patent proprietor may amend claims and, in particular, that it is irrelevant for R. 80 EPC whether the features additionally included in an attacked claim originate from dependent claims or from the description. In the present case, all three independent claims had been limited in relation to the opposed and not further pursued independent claim of the granted version and therefore apparently served to overcome the ground for opposition in the respective claim – and thus also overall. Therefore, R.80 EPC was fulfilled in the present case. According to the board, it is generally legitimate to cover several sub-areas at the same time that, in the opinion of the patent proprietor, are not affected by the ground for opposition. The purpose of R 80 EPC is not to prevent the patent proprietor from maintaining the patent as broadly as possible, taking into account the grounds for opposition.

Appeal case T1191/22 – several independent claims limited by different dependent claims

In the case T1191/22, patent attorney Felix Hermann succeeds in having the first-instance decision set aside, which had rejected an auxiliary request as contrary to R. 80 EPC because, in addition to an amended claim 1, it included further independent claims 12 to 15 based on granted dependent claims.

In line with decision T0123/22, the board corrected the opposition division’s decision by stating that R. 80 EPC is a substantive rule and not a procedural one. Referring to the earlier decision T0937/00, the board ruled that defending the patent with several parallel independent claims is in principle admissible and does not violate R. 80 EPC if the formulation of new independent claims in the opposition proceedings is aimed at overcoming asserted grounds for opposition.

Furthermore, the board stated that procedural aspects of allowability such as the lack of convergence of the independent claims or the effect of the auxiliary request on procedural economy are not relevant for the assessment of allowability under R. 80 EPC. The Board of Appeal decides to set aside the decision of the Opposition Division and to maintain the patent on the basis of the auxiliary request not admitted at first instance.

Extended scope of action for patent proprietors

The two decisions T0123/22 and T1191/22 both emphasise the substantive aspect of R. 80 EPC and distinguish it from procedural issues concerning the admissibility of a request. Both decisions, which were issued by two different boards of appeal, also confirm the principle that R. 80 EPC does not preclude a replacement of an independent claim of a granted patent with several amended independent claims in order to defend the patent in limited form, as long as the amendments can be considered a serious attempt to overcome the asserted grounds for opposition. This basically recognises the right of patent proprietors under R. 80 EPC to cover several sub-areas of the original subject-matter at the same time, i.e. in one and the same request, which from the point of view of the patent proprietors are not affected by the grounds for opposition asserted in the opposition proceedings.

 

Dr. Adrian Steffens, Patent Attorney at BOEHMERT & BOEHMERT

Patent Applications for AI Technologies at Record High

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

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

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

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

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

Trade Mark Misuse in Practice

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

Case Law on Bad Faith Trade Mark Applications

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

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

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

Abusive Exploitation of a Merely Formal Legal Position

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

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

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

Fabio Adinolfi, Rechtsanwalt bei BOEHMERT & BOEHMERT

Radiator grille element infringes Audi brand

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In its judgment of January, 25 (C-334/22), the CJEU clarified that a car manufacturer can prohibit the use of a sign for spare parts if it contains an element that is similar or identical to a trademark.

Audi’s well-known four-rings trademark is registered in the EU for vehicles and spare parts, among other things. A Polish dealer was selling copied radiator grilles intended for older Audi vehicles. The radiator grilles contained an element whose shape is similar or identical to the Audi trademark and is also intended for mounting the four-ring trademark.

In 2017, Audi took action against this dealer in Poland. The aim was to obtain a ban on marketing copied radiator grilles of the aforementioned type. The Polish court referred the case to the CJEU with the request to clarify whether the marketing of replacement car parts at issue (specifically: radiator grilles) constituted “use of a sign in the course of trade” that could impair the functions of the Audi brand. Furthermore, the national court wanted to clarify whether the owner of this trademark can prohibit a third party from such use.

In its judgment, the Court affirms this. It states that in the present case, the radiator grilles did not originate from the trade mark proprietor and had been placed on the market without its consent. The part intended for affixing the Audi emblem was integrated into the radiator grilles for their marketing by the third party. It is therefore visible to the public wishing to purchase such a spare part. This could constitute a factual link between the spare part in question and the owner of the AUDI mark. Therefore, such use could impair the functions of the trademark (including the origin or quality of the goods).

However, the specific legal dispute still has to be decided by the court in Warsaw, which is bound by the legal opinion of the CJEU. The CJEU left it to the Polish court to examine whether the disputed part on the radiator grille is identical or similar to the Audi brand.

Should Audi actually prevail in the proceedings, the practical consequence of the ruling is likely to be that radiator grille manufacturers will in future maintain a significant distance from (automotive) brands when designing corresponding products in order to avoid brand collisions.