“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.

General Court denies likelihood of confusion between pharmaceutical marks containing “mar” element- Article by Dr. Florian Schwab in WTR Daily

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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 (Fifth Chamber) in Case T-261/19 20 January 2021, Stada Arzneimittel AG v. European Union Intellectual Property Office (EUIPO).

In this judgment, the Court upholds the decision of the First Board of Appeal of EUIPO that there is no likelihood of confusion between the EU figurative mark sign OPTIMAR and the earlier word mark MAR. For the latter, the evidence of genuine use was limited to “medical nasal sprays”.

With regard to the identically covered element MAR, the Court considered a below-average distinctive character in view of the recognisably descriptive reference to “sea” for medical nasal sprays.

The full article in English is available to registered users of WTR Daily here online and as a PDF download!

“Patent System Solutions for AI and IoT Inventions” – Article by Prof. Dr. Goddar in the February issue of GRUR

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In the current edition of “GRUR – Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht” (German Association for the Protection of Intellectual Property), BOEHMERT & BOEHMERT patent attorney Prof. Dr. Heinz Goddar devotes himself to the specific challenges for the patent system in the age of artificial intelligence (AI). 

In his article with the original title “Patent System Solutions for AI and IoT Inventions”, Prof. Dr. Goddar not only deals in detail with problems such as the patentability of AI-related inventions or the use of standard essential patents of competitors under FRAND conditions. He also warns of the consequences that a predictable multiplication of patent portfolios would mean for new developments based on AI and IoT and recommends using already existing conflict solution mechanisms of the patent system also with regard to AI and IoT. 

The article was published on the occasion of Prof. Dr. Peter Meier-Beck’s 65th birthday as a commemorative article in the 2/2021 issue of GRUR. Subscribers to Beck-Online can access it under GRUR 2021, 196.

Article by Dr. Michael Rüberg and Lars Eggersdorfer in “Legal Era” on the judgement of the OLG Düsseldorf on the continued use of advertising after product modifications

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If advertising material that was originally used for a patent-infringing product continues to be used as such, this may constitute an independent patent infringement. And this even if the advertised product has been technically modified in a way that a patent infringement is excluded.

BOEHMERT & BOEHMERT attorneys Dr. Michael Rüberg and Lars Eggersdorfer report on this judgement as well as a subsequent decision in a penalty payment proceeding of the Higher Regional Court of Düsseldorf in their article for the Indian trade journal “Legal Era” – combined with useful tips on how to deal with this problem in practice.

The full article in English entitled “Higher Regional Court of Dusseldorf decides on further use of advertising after product modification” is available online here.

Podcast: Dr Eckhard Ratjen in an interview with “Packaging Europe” on the topic of “Trademarks in Packaging”

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In view of the large range of similar products, packaging is becoming increasingly important in the context of the purchase decision. The competition for new packaging formats and designs is correspondingly fierce. So it seems likely to protect not only the product but also its packaging under trademark law. 

But under what conditions is it possible to register packaging as a trademark? When does trademark protection make sense at all? And which parts of a packaging can be protected as a trademark? 

In an interview with Elisabeth Skoda from the online platform “Packaging Europe”, BOEHMERT & BOEHMERT attorney Dr. Eckhard Ratjen answers these and other questions, explains practical examples and gives useful tips on the protection of product packaging under trademark law. 

The interview is available as a podcast here!

“Germany: Constitutional Court Requires Equal Arms in Preliminary Injunction Matters” – Article by Dr. Rudolf Böckenholt in les Nouvelles of LES International

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In the December 2020 edition of “les Nouvelles Online”, the trade journal of the Licensing Executives Society International, BOEHMERT & BOEHMERT attorney Dr. Rudolf Böckenholt provides detailed information about a decision of the German Constitutional Court in summer 2020 to strengthen the “equality of arms” of all parties in the injunction proceedings. 

The background to this is the common practice for decades, according to which the defendant was only heard in the oral hearing upon objection, i.e. after the preliminary injunction had already been issued and was to be observed.

The German Constitutional Court is again putting paid to this procedure with its ruling in June and July of this year, after having already strengthened the rights of the defendant in September 2018.

According to the decision of the German Constitutional Court, the opponent must be given a legal hearing before a decision is made, and this must be on the specific subject matter in dispute. Both parties must be equally involved in the legal proceedings. 

Subscribers of the LESI Magazine can download the detailed article by Dr. Böckenholt here!

New GRUR article “The Digital Private Copy in the Age of Exception Based Business Models” by Dr. Martin Schaefer

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In the 12/2020 issue of the journal “GRUR – Zeitschrift der Deutschen Vereinigung für gewerblichen Rechtsschutz und Urheberrecht” (GRUR is the German Association for the Protection of Intellectual Property, the largest and oldest association in Germany that is dedicated to the protection of intellectual property), on the occasion of two judgements of the German Federal Court of Justice, BOEHMERT & BOEHMERT attorney Dr. Martin Schaefer analyses the current practice, in Germany, of basing commercial business models on exceptions and limitations of German copyright law that in their majority had been created for non-commercial use only. 

Under the title „The Digital Private Copy in the Age of Exception Based Business Models”, Dr. Schaefer calls for such business models to be examined more closely than so far regarding their compatibility with the requirements of EU law. 

The article is available in German only either in print or to subscribers on the Beck-Online platform under: GRUR 2020, 1248.