Dr. Rudolf Böckenholt discusses in GRUR-Prax the judgment of the Higher Regional Court of Frankfurt on exaggerated advertising to professionals

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In issue 18/2021 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses a decision of the Higher Regional Court of Frankfurt am Main of June 7, 2021 (6 W 39/21, GRUR-RS 2021, 18190) regarding an advertisement directed at specialist circles with the eye-catching headline “Make your patients long-term happy!” for a psoriasis preparation.

The court found that the claim was not perceived as a statement of fact, but rather as an evaluative promotion that was not misleading in this context.

According to the diction of the claim and its positioning, it was a typical advertising exaggeration. If the factual core of the promotion is not untrue, it is not indirectly misleading to specialist circles, even in the case of health-related advertising.

The article in German by Dr. Böckenholt is available in the printed edition of GRUR-Prax 18/2021 of September 15, 2021 on page 541 or for registrated users of Beck-Online here.

“Company invention – and now?” New article by Prof. Dr. Goddar in the trade magazine Arbeitsrecht im Betrieb

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It is not uncommon for employees to develop ideas or innovations in the course of their work which increase the efficiency of operational procedures or improve products manufactured in the company. Such inventions in the workplace must be reported to the employer. 

But what does a proper invention disclosure to the employer look like? What requirements should an employee invention fulfil in order to be filed for a patent? And what remuneration is appropriate for an employee invention? 

BOEHMERT & BOEHMERT partner and patent attorney Prof. Dr. Heinz Goddar answers these questions in his detailed article “Company invention – and now?”, published in the trade magazine “Arbeitsrecht im Betrieb” (Labour Law at Work), issue 9/2021. 

Registered subscribers to “Arbeitsrecht im Betrieb” can download the article, which is supplemented with many tips and links, here.

Dr. Jan B. Krauß as co-author of scientific article on therapy of skin disease Epidermolysis bullosa junctionalis

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In the context of his work at the University of Salzburg, BOEHMERT & BOEHMERT patent attorney Dr. Jan B. Krauß has published an article as co-author on the topic “Drug Development for Target Ribosomal Protein rpL35/uL29 for Repair of LAMB3R635X in Rare Skin Disease Epidermolysis Bullosa”.

In the scientific paper, atazanavir and artesunate are identified as candidate compounds that bind to the ribosomal protein rpL35. The compounds are currently being tested for their potential to trigger a rpL35 ribosomal switch to increase the production of full-length Lamb3 protein from a LAMB3PTC mRNA. This serves as a targeted systemic therapy in treating the rare genetic blistering skin disorder severe junctional epidermolysis bullosa.

Dr. Krauß published the article together with A. Rathner, P. Rathner, A. Friedrich, M. Wießner, CM. Kitzler, J. Schernthaner, T. Karl, F. Lottspeich, W. Mewes, H. Hintner, JW. Bauer, M. Breitenbach, N. Müller, H. Breitenbach-Koller and J. von Hagen.
It may be read in the July 2021 issue, Vol. 34, No. 4, of the scientific journal “Skin Pharmacology and Physiology” published by S. Karger AG and can be purchased here.

“Why Metadata Matters for the Future of Copyright” – Dr. Martin Schaefer in the journal European Intellectual Property Review

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Metadata is essential in the copyright industry of the 21st century to keep the engine of copyright running smoothly and powerfully for the benefit of creators, users and the copyright industry as a whole. But metadata is difficult to acquire and even difficult to keep up to date, as content rights are mostly multi-layered, fragmented, international and moreover volatile.

BOEHMERT & BOEHMERT partner and lawyer Dr. Martin Schaefer deals with a solution approach for this challenge in his article “Why Metadata Matters for the Future of Copyright”, which appeared in the 08/2021 issue of the “European Intellectual Property Review” (E.I.P.R.). Together with co-author Prof. Dr. Norbert Gronau from the University of Potsdam, Dr. Schaefer develops the idea of a neutral tool for searching and improving metadata that could serve as a buffer to protect the interests of proprietary database owners and avoid the shortcomings of centralised databases.

In light of various EU efforts, the authors conclude in their paper that it is time to take the concept of a “metadata search and enhancement tool” to a new level. And this is not only for the music industry, as the entire copyright sector could benefit from such approach. Large international public organisations – such as those under the roof of the EU – would be predestined for implementation.

“Basic price to be indicated for pre-packages with concentrates and powdery contents” – Dr. Rudolf Böckenholt on the judgement of the VG Berlin in a new GRUR-Prax article

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In issue 8/2021 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht”, BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses a judgement of the Berlin Administrative Court of 23.02.2021 (VG 4 86.19, BeckRS 2021, 4332) on the mandatory indication of a basic price also for pre-packaged dry powders.

The court found that the indication of a basic price was in principle dependent on the fact that a product was offered by weight, volume, length or surface. However, it was not only the goods (in the sense of the dry mass) that mattered, but also labelling obligations due to other statutory requirement.

Accordingly, not only the dry mass was to be taken into account, but also the volume of the ready-to-eat preparation or the mass of the liquid required for preparation according to s. 20 II FPackV. Based on these values, a basic price had to be indicated.

The article by Dr. Böckenholt is available in German in the printed edition of GRUR-Prax 8/2021 of 21.04.2021 on page 242 or for subscribers of Beck-Online under the reference GRUR 2021, 242.

“General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship” – Article by Dr. Florian Schwab in WTR Daily

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In his recent article “General Court confirms invalidity of EUTM on ground of bad faith due to prior contractual relationship” on the online portal of the trade journal World Trademark Review, WTR Daily, BOEHMERT & BOEHMERT attorney Dr. Florian Schwab discusses a decision of the General Court of the European Union in case T-853/19 of 17 March 2021, Reza Hossein Khan Tehrani v. European Union Intellectual Property Office (EUIPO).

The General Court upheld the judgment of the Board of Appeal of the EUIPO on the cancellation of the EU trade mark registration EARNEST SEWN on the grounds of bad faith. This judgment contributes to this legal concept, which is difficult to categorise and which is often decided on a case by case basis by the EU Courts. It discusses the relevance of prior contractual relationships between the trade mark proprietor and the cancellation applicant for the assessment of bad faith filing.

Registered users of WTR Daily can access the full article in English online here!

“Modernising Patent Law – Blessing or Curse for Patent Holders?” – Article by Dr. Ute Kilger in European Biotechnology

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The wonder weapon of every patent holder was injunctive relief. Even large companies were willing to take a seat at the negotiating table when threatened with an injunction against their allegedly patent-infringing products by small patent holders. 

Now the new German Patent Act will contain a clause in § 139 that allows exceptions from automatic injunctive relief in a few individual cases, e.g. if the consequences for the infringer would be unreasonably severe. 

BOEHMERT & BOEHMERT partner and patent attorney Dr. Ute Kilger discusses this amendment and its impact on legal certainty and willingness to invest in innovations in her article “Modernisation of patent law – boon or bane for patentees?” published in the Spring 2021 issue of the trade journal “European Technology”, Volume 20. 

The full article is available online here.

“(K)eine Frage des Alters – Patentverletzung infolge betriebsgemäßer Abnutzung” – contribution by Nils T. F. Schmid in Festschrift for Sabine Rojahn

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“Internationale Durchsetzung von Schutzrechten” (International Enforcement of Intellectual Property Rights) is the title of the jubilee publication with contributions by Germany’s most renown judges, lawyers and attorneys published by C.H.Beck Verlag in 2021 on the occasion of the 70th birthday of Germany’s “grande dame of patent law” Dr. Sabine Rojahn. Among the contributors is also BOEHMERT & BOEHMERT patent attorney Nils T.F. Schmid.

In his contribution entitled “(K)eine Frage des Alters – Patentverletzung infolge betriebsgemäßer Abnutzung” (A question of age? – patent infringement due to wear and tear), Nils T.F. Schmid discusses two patent litigation cases which provide particular insight into the influence of wear and tear on the interpretation and definition of technical property rights. He specifically analyses the current state of case law with regard to legal questions of infringement (§§ 9, 10 German Patent Act), novelty (§ 3 German Patent Act) and inventive step (§ 4 German Patent Act), points out implications for the definition of scopes of protection and derives possible conclusions for the future.

In his conclusion, Nils T.F. Schmid emphasizes the necessity of including wear and tear effects of products and devices in the formulation and interpretation of patent claims – not only for the assessment of infringement, but also within the application process, especially the definition of the scope of protection. A catalogue of criteria for the examination for calculable wear and tear tries to increase legal certainty for registered and examined intellectual property in respective technical fields.

“Internationale Durchsetzung von Schutzrechten” can be ordered at C.H.Beck Verlag under ISBN 938 3 406 75240 7.

Decision G 1/19 of the Enlarged Board of Appeal of the EPO published – Article by Dr. Daniel Herrmann and Felix Hermann in epi Information

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In the journal of the Institute of Professional Representatives before the European Patent Office, BOEHMERT & BOEHMERT German and European Patent Attorneys Dr. Daniel Herrmann and Felix Hermann discuss under the title “G 1/19 released: The Enlarged Board of Appeal decides on the Patenting of Computer-implemented Simulations and Designs” a recent decision of the Enlarged Board of Appeal of the EPO on the patenting of computer-implemented simulations and designs.

The Enlarged Board of Appeal concludes that computer-implemented numerical simulations and designs of a system or process are not to be treated differently from other computer-implemented inventions, thereby rejecting “extreme positions” such as in the reference decision T 0489/14.

In their final assessment of the EPO decision, the authors point out that it will be even more difficult in future for patent applicants to claim and protect a simulation or design process independently of a particular and specific technical input or output or an implied use of the results of the simulation or design process.

Read the full article by Dr. Daniel Herrmann and Felix Hermann here!

“Digitalization and Intellectual Property” – Article by patent attorney Nils T. F. Schmid in German government consulting booklet on “Artificial intelligence”

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Progressive digitalization – combined with artificial intelligence (AI) as well as growing computer capacities – is changing our lives permanently and is without doubt the central challenge for industries in the years to come.
However, what on the one hand offers a great opportunity for the protection and commercialization of intellectual property, on the other hand also poses the considerable risk of circumvention of IP rights and thus for undesired imitation. Furthermore, the question arises as to whether and how a distinction can be drawn between works of art or inventions generated by artificial intelligence and those created by humans. This question is of central importance for German law and prosecution, as the German idea of intellectual property is based on the idea of an author or inventor, and more strictly so than in any other country.

BOEHMERT & BOEHMERT patent attorney Nils T. F. Schmid addresses these issues in his article “Digitalization and Intellectual Property” in the information brochure of the Innovation Commission of the Federal Association for Economic Development and Foreign Trade (Bundesverband für Wirtschaftsförderung und Außenwirtschaft BWA) on the topic of “Artificial Intelligence”.
Using the example of 3D printing, Mr Schmid looks at how 3D printing could influence intellectual property protection strategies and which legal issues will come to the fore as a result.
In the second part of the article, Nils T. F. Schmid deals in detail with the demarcation of AI-generated inventions against human-created works as well as with the resulting questions regarding patent protection for AI inventions and their ownership.

The article “Digitalization and Intellectual Property”, which appeared in the aforementioned BWA brochure “Innovation”, may be accessed here as a PDF in German.