WTR 1000 Trademark Review 2026 recognises Sören Dahm and Dr Benjamin Pesch

World Trademark Review has published the WTR 1000 2026, and we are pleased to announce that our Partner Sören Dahm  and Counsel Dr Benjamin Pesch have again been named in this year’s edition.

The recognition reflects their long-standing experience in contentious trademark litigation, as well as their proven ability to advise clients on complex, cross-border trademark matters.

The WTR 1000 is the authoritative guide to the world’s top trademark professionals across key jurisdictions, highlighting firms and individuals distinguished by outstanding expertise and client service.

We would like to thank our clients for their continued trust and cooperation.

Click here to access the full report.

News from Luxembourg: Court of Appeal confirms and details its previous case law on interpretation, inventive step and proportionality

UPC (Court of Appeal), decision of 25 November 2025 – UPC_CoA_457/2024, UPC_CoA_458/2024, UPC_CoA_464/2024, UPC_CoA_530/2024, UPC_CoA_532/2024, UPC_CoA_533/2024, UPC_CoA_21/2025, UPC_CoA_27/2025 – Edwards Lifesciences v. Meril

In the Edwards Lifesciences v. Meril case, the Court of Appeal of the Unified Patent Court published its decision on 25 November 2025. In doing so, it not only confirmed its previous case law on the interpretation of patents, but also detailed its case law on the examination of inventive step and the proportionality of the injunctive relief and other measures.

Facts of the case

Edwards Lifesciences Corporation, the parent company of the Edwards Lifesciences Group, which is active in the development and distribution of artificial heart valves and accessories, among other things, filed a lawsuit with the LD Munich on 1 June 2023 for infringement of European patent EP 3 646 825 (“patent in suit”) relating to a system consisting of an artificial heart valve and an insertion catheter against Meril Life Sciences Pvt Ltd., a medical device manufacturer, and its European distribution company Meril GmbH. On 4 August 2023, the Italian distribution company Meril Italy S.R.L. filed a nullity action against the patent in suit before the CD Paris. On 2 November 2023, Meril Life Sciences Pvt Ltd. and Meril GmbH filed a counterclaim for revocation. In its response to the counterclaim on 9 January 2024, Edwards also submitted a request for amendment of the patent. Edwards filed a corresponding request for amendment (which had already been preceded by an initial request, on which a decision was still pending) on 22 January 2024, but this was rejected on 27 February 2024. The appeal was not allowed, and the discretionary review by the Court of Appeal did not lead to a different result. On 28 March 2024, the LD Munich referred the counterclaim for annulment to the CD Paris. In written submissions dated 11 April 2024 and 12 April 2024, Edwards requested a further amendment to the patent in both the nullity proceedings and the counterclaim proceedings, reducing the number of claims made.

On 19 July 2024, the CD Paris partially dismissed the nullity action and the counterclaim for revocation and upheld the patent in suit on the basis of the second auxiliary request.

In the infringement proceedings, the LD Munich found Meril Life Sciences Pvt Ltd. and Meril GmbH guilty of infringing the patent in suit by distributing the contested embodiments. The XL variant of the attacked embodiment was exempt from recall and destruction insofar as it was already scheduled for the treatment of patients until 15 November 2024. The LD considered the injunction claim to be proportionate only because the XL variant could be distributed in individual cases if a patient required it, provided that a physician had uploaded the relevant patient data to Edwards’ “Medical Device Portal” and an examination by Edwards’ physicians had shown that no Edwards product was suitable for the specific patient.

Both parties lodged appeals against the decisions concerning the action for annulment and the counterclaim for revocation, as well as against the decision concerning the infringement of the patent in suit. In addition, the parties lodged appeals against individual decisions, which will not be discussed in further detail here.

Decision of the Court of Appeal

The Court of Appeal essentially confirms the decisions of the LD Munich and the CD Paris. 

Instead of going into the details of the specific case, the following description focuses on the generalizable findings of the Court of Appeal in connection with the interpretation, inventive step and (dis)proportionality of the injunction and other measures.

1. Interpretation of the patent in suit

In its interpretation, the Court of Appeal confirms in abbreviated form the principles of interpretation it had already set out in the case of “NanoString v 10x Genomics” (UPC (Court of Appeal), decision of 26 February 2024 – UPC_CoA_335/2023) (German translation):

“The patent claim is not only the starting point but the decisive basis for determining the protective scope of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent.”

In addition, the decision contains further principles of interpretation with regard to the interpretation of the relevant features of the teaching of the patent in suit, which are already known from German case law. For example, the Court of Appeal states that terms in the claim must be interpreted in the context of the patent from the perspective of a person skilled in the art, i.e., according to the German diction, the patent in suit forms its own lexicon. In connection with the embodiments of the patent in suit, it states that the claim must not be limited to a specific embodiment by way of interpretation. On the other hand, it can generally be assumed that a device or method described in the patent specification as an embodiment is also covered by the patent claims. Something else can only be assumed if the patent as a whole clearly conveys to the skilled person that the disclosed embodiment is not claimed, e.g. if it merely illustrates a technical specification that is not dealt with.

2. Inventive step

In connection with the examination of inventive step, the Court of Appeal specifies its case law, which formed the basis for the decision in the case of “NanoString v 10x Genomics” (UPC (Court of Appeal), decision of 26 February 2024 – UPC_CoA_335/2023) and how it is now reflected in paragraphs 4 et seq., in particular 7 et seq. (German translation):

“7. The approach taken by the Unified Patent Court when establishing inventive step, which can already be derived from the Order of the Court of Appeal in the Nanostring v 10X Genomics case (UPC_CoA_335/2023, Order of 26 February 2024), is as follows.

8. It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the person skilled in the art, with their common general knowledge, as at the application or priority date (also referred to as the effective date) of the patent. This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the specification and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the person skilled in the art, on the basis of the application, understands is (are) achieved with the claimed invention.

9. In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution. The claimed solution is obvious when at the effective date the person skilled in the art, starting from a realistic starting point in the state of the art in the relevant field of technology and wishing to solve the objective problem, would (and not only “could”) have arrived at the claimed solution.

10. The relevant field of technology is the specific field relevant to the objective problem to be solved as well as any field in which the same or similar problem arises and of which the person skilled in the art in the art of the specific field must be expected to be aware.

11. A starting point is realistic if the teaching thereof would have been of interest to a person skilled in the art who, at the effective date, wishes to solve the objective problem. This may for instance be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention. There can be more than one realistic starting point, and the claimed invention must be inventive starting from each of them.

12. The person skilled in the art has no inventive skills and no imagination and requires a pointer or motivation (in German: “Anlass”) that, starting from a realistic starting point, directs them to implement a next step in the direction of the claimed invention. As a general rule, a claimed solution must be considered not inventive/obvious when the person skilled in the art would take the next step, prompted by the pointer or as a matter of routine, and arrive at the claimed invention.

13. For an inventive step to be present, it is not necessary to show improvement of the technical teaching as defined by the patent claims over the prior art. Inventive step may also be found if the patent claims disclose a non-obvious alternative to solutions known in the prior art.”

Based on these principles, the Court of Appeal finds in the present case that the teaching of the patent in suit is inventive in relation to the presented prior art. In some cases, the documents explicitly taught away from the solution according to the invention, in some cases they did not disclose at least one of the relevant features of the patent in suit, and in some cases it was not apparent that the person skilled in the art had any reason to further develop the teaching of the respective pitot art or to combine the teachings of the prior art. In doing so, the Court of Appeal also, among other things, disregards a preliminary opinion of the Opposition Division of the EPO on the lack of inventive step of a patent from the same patent family as the patent in suit, based on a document that was also the subject of the present proceedings.

3. Proportionality of the injunction and further measures

Finally, the Court of Appeal confirms the infringement of the patent in suit by the attacked embodiments. However, it sees a need for correction in the orders.

With regard to both the measures under Article 64 UPCA and the injunction under Article 63 UPCA, the Court of Appeal finds that these were not at the discretion of the court. In the event of an infringement, the measures were generally to be imposed, as already held in “Belkin v. Philips” (UPC (Court of Appeal), decision of 3 October 2025 – UPC_CoA_534/2024, UPC_CoA_683/2024, UPC_CoA_19/2025 – Belkin v. Philips). The same applied to the injunction under Article 63 UPCA. An exception to this rule applied only in exceptional cases where the measures or the injunction proved to be disproportionate.

With regard to the measures under Article 64 UPCA, this followed from Article 10 Enforcement Directive, according to which uniform, high protection is to be ensured throughout the EU. The ordering of measures therefore had to be the rule (see also UPC (Court of Appeal), decision of 3 October 2025 – UPC_CoA_534/2024, UPC_CoA_683/2024, UPC_CoA_19/2025 – Belkin v Philips). In the context of the proportionality test, the circumstances of the individual case were decisive, whereby the seriousness of the infringement and the measures, the willingness of the infringer to bring the form of infringement into a patent-free state, and third-party interests had to be taken into account.

With regard to the injunction under Article 63 UPCA, the same applied under Article 11 Enforcement Directive. In accordance with Articles 17(2) and 47 of the Charter of Fundamental Rights of the European Union, the Enforcement Regulation provided for various means of ensuring a high level of protection. The patentee had to be able to enforce its rights effectively, and the patent user had to obtain a license before use. An injunction was therefore only ruled out if the order was disproportionate, cf. Article 3 Enforcement Directive. Here, too, the interests of the parties and third parties must be taken into account.

On this basis, the Court of Appeal finds that, in the field of medical devices, disproportionality was to be considered if the attacked embodiment is the only available treatment option or represents an improvement on existing treatments, leading to a noticeable improvement in patient care. 

As a result, the Court of Appeal agrees with the findings of the LD Munich that the XL variant of the attacked embodiment had to be exempt from the injunction, but nevertheless sieht a need for correction with regard to the order. The Court of Appeal is of the opinion that the availability of the product should not depend on Edwards’ willingness to maintain the portal or on the assessment of Edwards’ physicians. Rather, it should be sufficient for a physician to inform a patient that he or she intends to use the variant and that this is the only way to treat the patient.

Conclusion

The principles of interpretation cited again by the Court of Appeal are derived from Article 1 of the Protocol on the Interpretation of Article 69 EPC. The Enlarged Board of Appeal of the EPO recently summarized the principles of patent interpretation in a similar manner in the case of “Heated Aerosol Generating Article” (EPA (GBK), decision of 18 June 2025 – G 1/24). These principles are also recognized in German case law (see, for example, BGH GRUR 2015, 875 – Rotorelemente). The Court of Appeal clarifies that these principles of interpretation apply both to infringement and to validity.

With regard to the principles for determining the existence or non-existence of inventive step, the Court of Appeal also confirms its previous case law here, but abstracts it in form of a examination scheme.

The Court of Appeal is correct in stating that the different approaches to determining inventive step should lead to the same result. In fact, there are far fewer differences between the problem-solution approach and the approach taken by the Federal Court of Justice than is sometimes assumed (cf. Deichfuß, GRUR 2024, 94). The Court of Appeal now presents its own approach in abstract form. It would have been desirable to have a brief explanation of why the Court of Appeal does not adopt the EPO’s approach. The Court of Appeal does not appear to define the objective problem or objective on the basis of the closest prior art. However, the Court of Appeal does refer to aspects and terminology that can be found in both German case law and that of the EPO. Thus, according to the Court of Appeal, it is not important whether the person skilled in the art could have arrived at the solution according to the invention, but whether he would have arrived at it. Similarly, both the German case law and that of the EPO are familiar with the concept of the starting point, although the EPO refers to the “most promising” starting point and not merely a “realistic” one, as does the Court of Appeal. It remains to be seen how the UPC will apply and flesh out this examination scheme in the future in order to better classify the approach.

Finally, with regard to the question of the proportionality of the injunction and further measures, infringers will take note of the decision in Belkin v. Philips and the present decision. As a result of the finding that, in the event of an infringement, an injunction and further measures are generally to be imposed, the assumption of an “automatic injunction”, as known from German case law, is not far-fetched. It can therefore be assumed that considerations of proportionality will hardly lead to a different result at the UPC in the future. In the field of medical devices, however, the Court of Appeal has clarified that disproportionate measures may be considered in exceptional cases if the form of infringement is the only available treatment option or represents an improvement in existing treatments, leading to a noticeable improvement in patient care. 

Dr Benjamin Pesch

JUVE Patent UPC Rankings 2026: Kather Augenstein recognised again among Top Five Patent Litigation Firms with Top Tier 5-Stars

The JUVE Patent UPC Rankings 2026 have just been released today, and we are delighted to be recognised again as one of the Top Five Patent Litigation Law Firms, receiving a prestigious 5-star rating. This incredible achievement is a testament to our unwavering dedication, expertise, and meticulous precision we bring to our work every day.

We are truly grateful to our clients for placing theri trust in us and our work. JUVE Patent has recognised KATHER AUGENSTEIN for its “sustained excellence at the UPC,” noting our firm’s “major case successes, broad technical expertise, a highly skilled team, strong caseload management, and ongoing growth and market recognition.”

We are especially proud that our partners have been individually recognised for their outstanding contributions: Dr Christof Augenstein and Miriam Kiefer LL.M. have again been named Leading Individuals – UPC Litigator 2026 in Germany, while Christopher Weber is praised for being “highly responsive” with “good technical understanding” underscoring his “expertise and effectiveness in UPC litigation”. Their leadership before the Unified Patent Court, together with the skill, dedication, and strategic vision of our entire team, continues to strengthen our position in the European patent litigation landscape and demonstrates our proven ability to manage complex, high-stakes cases across diverse technical sectors.

All this would not have been possible without our 𝐢𝐧𝐜𝐫𝐞𝐝𝐢𝐛𝐥𝐞 𝐭𝐞𝐚𝐦 whose hard work and dedication have been key to this success: Dr Christof Augenstein, Miriam Kiefer LL.M., Christopher Weber, Sören Dahm, Dr Peter Kather, Dr Benjamin Pesch, Carsten Plaga, Dr Benedikt Walesch LL.M., Dr Katharina Brandt, Sophie Prudent LL.M., Robert Knaps, Dr Melissa Lutz, Nicole Schopp, Christoph Heringlake, Arne-Steffen Kamps, Svenja Ullmann, Donna Magdalena Gulla, Kerstin Klare, Saskia Helten, Almir Haurdic, Rebecca Siegert, Claudia Schwansee, Claire Edmonds, Daniela Kortmann, Kathrin Kiefer.

We are passionate about maintaining our commitment to excellence in patent litigation and are excited to see what the future holds.

Read the full Rankings 2026 here.

Decision dated 3 October 2025 – On the liability of the managing director for patent infringements and the concept of “offering” (Art. 63 UPCA and Art. 25(a) UPCA, Court of Appeal

(Art. 63 UPCA and Art. 25(a) UPCA, Court of Appeal, decision dated 3 October 2025, UPC_CoA_534/2024, UPC_CoA_19/2025, UPC_CoA_683/2024)

In a recent decision, the Appeal Court of the Unified Patent Court dealt, among other things, with liability of a managing director and clarified the term “offering” within the meaning of Art. 25(a) UPCA.

Facts

The subject matter of the proceedings was three jointly heard appeals against a decision of the Local Division Munich, with the Claimant and Defendants each appealing against the judgment in the infringement proceedings and the Defendants additionally appealing against the dismissal of the counterclaim for revocation. The Local Division Munich had upheld the infringement claim and ruled against the Defendant, but fell short of the Claimant’s request that the Defendant’s managing directors also be held liable alongside the companies themselves. The counterclaim for revocation was dismissed.

In its appeal, the Claimant and owner of the patent in suit therefore requested that the first-instance judgment be amended to hold the Defendant’s managing directors liable for the patent infringements. The Defendant’s two appeals sought to have the judgment in the infringement proceedings set aside and the counterclaim for revocation dismissed. For the first time in the appeal proceedings, the Defendant asserted a lack of inventive step with regard to a citation already introduced in the first instance.

Decision of the Court of Appeal

The Court of Appeal upheld the infringement with regard to the liability of the managing directors. It also confirmed the dismissal of the counterclaim for recovation. The Court of Appeal allowed the objection of lack of inventive step, as the citation itself had already been the subject of the first instance decision; however, this had no effect on the legal situation.

1. Offering within the meaning of Art. 25(a) EPCU

The Court of Appeal states that the term “offer” must be interpreted autonomously. It should also cover actions carried out in the run-up to contracts that could result in the patent holder losing business. An offer is therefore to be understood primarily in economic terms. A binding contractual offer, as is regularly required from a legal point of view, is not decisive. This broad interpretation means that even an “invitatio ad offerendum” that does not include a price constitutes offering in the meaning of Art. 25 lit. a) UPCA. The CoA thus clarifies that even the communication of (incomplete) framework conditions with an associated invitation to submit an offer is sufficient to constitute an offer within the meaning of Art. 25 lit. a) UPCA.

The term “offering” also covers cases where the patent-infringing product cannot be purchased directly from the defendant itself, but the defendant refers to an offer from a third party. It is irrelevant whether the third party actually distributes the patent-infringing product. The third party does not have to be ready to deliver.

2. Managing director liability

With regard to the question of managing director liability, the Court of Appeal first establishes some general principles. An infringer within the meaning of Art. 63(1) UPCA is also someone who does not carry out the acts themselves, but to whom the acts of the principal perpetrator are attributable because they are an instigator, accomplice or accessory. This interpretation is in line with the purpose of the provision, namely the effective enforcement of patent law. Art. 63 UPCA therefore also allows for a final order against those who commissioned or instigated the act of use. The autonomous interpretation also implies the liability of the accomplice. According to the Court of Appeal, an accomplice is someone who supports the acts of use by a third party even though they were aware of the patent infringement. Awareness of the unlawfulness is required for knowledge.

According to the above principles, a managing director can also be held liable for patent infringements. However, it should be noted that the mere position of managing director does not make him an accomplice or co-perpetrator. The managing director’s obligation to pay compensation based on his general management, control and organisational duties is therefore ruled out. In the opinion of the Court of Appeal, liability can only be considered if the managing director’s objectionable action goes beyond the typical duties of a managing director, for example in the case of the purposeful use of the company to commit a patent infringement. In addition, the managing director must be aware of the infringement. This requires not only that the managing director be aware of the circumstances giving rise to the patent infringement, but also that he be aware of its illegality. If he seeks legal advice on the question of patent infringement, he can generally rely on this advice until a declaratory decision is made in the first instance.

Company law does not preclude recourse against the managing director, as the purpose of the limitation of liability is to limit the personal liability of the shareholders, not to minimise the responsibility of the managing director.

Conclusion

The Court of Appeal interprets the term “offering” in a similarly broad manner. This means that it does not only refer to direct sales as such. The patent holder should be comprehensively protected. This approach is well known in German case law. According to the case law of the Federal Court of Justice, preparatory acts that enable or promote the conclusion of a subsequent transaction also constitute acts of use.

In contrast, the decision of the Court of Appeal regarding managing director liability differs from German case law. Unlike in German case law, the exercise of measures that are typically decided at the business level is not sufficient. Liability under Art. 63 UPCA requires that (1) the managing director is aware of the circumstances of the patent infringement and (2) is aware of the unlawfulness of the act. A notice from the patent holder, such as a request for authorisation or a warning letter, is not sufficient to establish awareness of the unlawfulness if the managing director has sought legal advice. This decision provides clarity for managing directors on how to behave when they become aware of a possible patent infringement. They can avoid liability by obtaining a legal/patent attorney’s opinion, which is not usually possible under stricter national case law.

Dr Melissa Lutz

Reproducibility as a prerequisite under Article 54(2) EPC – Decision of the Enlarged Board of Appeal of the EPO dated 2 July 2025 – G 1/23

On 2 July 2025, the Enlarged Board of Appeal of the European Patent Office (Enlarged Board) handed down its long-awaited decision in case G 1/23.

The case concerned the question of the extent to which a publicly available product must be reproducible by a person skilled in the art in order to be considered prior art under Art. 54(2) EPC.

I. Facts and issue

The subject of the opposition proceedings was a patent protecting the technical teaching for encapsulating solar cells. The opponent considered a commercially available polymer to be prejudicial to novelty. It was undisputed between the parties that the exact manufacturing process was not generally known. The opponent therefore argued that a person skilled in the art would be able to produce a polymer similar to the available product. However, exact reproducibility could not be legally required. While the Opposition Division rejected the opposition, the Board of Appeal referred the following three questions to the Enlarged Board of Appeal:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?
2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?
3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92?

II. Considerations of the Enlarged Board of Appeal

In this context, the Enlarged Board of Appeal once again dealt in depth with a decision from 1992 (G 1/92). In that case, the Enlarged Board of Appeal had 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.”

The Enlarged Board of Appeal noted that the question referred for the G 1/92 decision did not contain any reference to reproducibility of any kind. It read as follows:

Is the chemical composition of a product made available to the public by virtue of the availability to the public of that product, irrespective of whether particular reasons can be identified to cause the skilled person to analyse the composition?

The Enlarged Board of Appeal therefore first examined the question of whether the feature of reproducibility should be assessed differently depending on whether the reproducibility of the chemical composition or of the entire product was considered. However, the Enlarged Board of Appeal concluded that the requirement of reproducibility was no longer tenable in either interpretation.

The criterion of reproducibility created a legal fiction according to which a product that was actually freely available did not exist for the skilled person. This contradicted general life experience. Furthermore, exceptions must be handled restrictively and standardised by law. In the present case, it was not apparent from the law why public products should be treated differently from written prior art, which – unlike patent applications – is also not examined for its feasibility.

In addition, the requirement of reproducibility would mean that the precursors of the product potentially damaging to novelty would also have to be reproducible, since the skilled person could also only use the prior art to assess the question of reproducibility. This would mean that the skilled person would not only have to be very familiar with the vertical distribution chain, but would ultimately also have to be able to reproduce all preliminary products, i.e., in extreme cases, starting at the atomic and molecular level. The Enlarged Board of Appeal referred, by way of example, to crude oil, which is the precursor to countless applications and yet cannot be reproduced to this day. This example shows that the requirement of reproducibility leads to inappropriate results.

The Enlarged Board of Appeal emphasised that, although it is theoretically possible to draw a line in the distribution chain, this cannot lead to satisfactory results given the multitude of technical areas.

Therefore, the requirement of reproducibility must be dropped.

As this already eliminated the second part of the cumulative requirement of the question referred (“analysed and reproduced without undue burden”), it was no longer relevant whether the undue burden requirement also applied to analysability. The Enlarged Board of Appeal suggested that there could well be cases in which analysability constituted an unreasonable burden, but left open the question of whether this had any bearing on whether a product belonged to the state of the art or not.

III. Answers to the questions referred

The Enlarged Board of Appeal subsequently answered the first question referred (in the negative) as follows:

“A product put on the market before the date of filing of a European patent application cannot be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.”

The Enlarged Board of Appeal answered the second question referred for a preliminary ruling with a logical “yes” and explained:

“Technical information about such a product which was made available to the public before the filing date forms part of the state of the art within the meaning of Article 54(2) EPC, irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.”

Since the third question referred required either a yes answer to the first question or a no answer to the second question, the Enlarged Board of Appeal left it open.

IV. Assessment

The skilled person no longer needs to be able to reproduce a product for it to be considered prior art. Analysability is sufficient. This increases legal certainty for third parties. The requirements are identical for all technical fields and independent of the details of the specific case. The Enlarged Board of Appeal has thus opted for an all-or-nothing solution in order to avoid contradictions. This is successful. On the other hand, the decision severely restricts the position of patent holders in opposition and appeal proceedings. The future will show whether a more differentiated approach is necessary after all.

National courts have so far predominantly pursued a more restrictive approach, as also pointed out by the AIPPI in its amicus curiae brief.

In the European context, it remains to be seen what course the Court of Appeal of the Unified Patent Court will take, which in the past has been open to EPO case law, as this naturally provides a more harmonised European approach than decisions by national courts.

Robert Knaps

IP Stars – Managing IP awards Kather Augenstein counsels Dr Benjamin Pesch and Carsten Plaga as Rising Stars 2025

We are delighted our counsels Dr Benjamin Pesch and Carsten Plaga have been named Rising Stars in the latest Managing IP – IP Stars Ranking 2025.

This prestigious award recognises young lawyers who have distinguished themselves through their particular expertise, commitment and sustained success in the field of intellectual property.

Dr Benjamin Pesch has been listed as a Rising Star for the fifth consecutive year – demonstrating his continued excellence in the field of patent law. His focus is on advising national and international clients on the enforcement of intellectual property rights, particularly in the fields of telecommunications and automotive. Accordingly, he has been involved in several major disputes before national courts and the Unified Patent Court in recent years (most recently Panasonic v. Oppo/Xiaomi). Another focus of his work is strategic advice in the area of licence agreements and advising clients in cases of patent applications by unauthorised third parties (vindication). His repeated award underscores his recognised position in the international IP community.

Carsten Plaga has been included in the Rising Star category for the first time this year. He primarily advises on patent law, with a particular focus on proceedings in the fields of technology, pharmaceuticals and life sciences. In addition to his work in patent infringement and nullity proceedings, he impresses with his deep technical understanding and practice-oriented advice of the highest standard.

His inclusion amongst the rankings reflects his growing visibility and the high quality of his work. He has already been involved in numerous proceedings before the Unified Patent Court (UPC) and thus has a broad experience in both national patent infringement proceedings and at European level.

With these two awards, Managing IP confirms Kather Augenstein‘s position as a leading boutique for complex and contentious IP proceedings in Germany. The recognition of Dr. Benjamin Pesch and Carsten Plaga impressively demonstrates the professional strength and depth of our team.

We warmly congratulate both of them on this well-deserved award!