Preparing the Unitary Patent System: Miriam Kiefer LL.M. holds the opening lecture for an online seminar series organized by the Japan External Trade Organization (JETRO)

After lengthy discussion, the Unitary Patent (UP) and Unified Patent Court (UPC) are finally expected to start in the first half of next year. At invitation of the Japan External Trade Organization (JETRO), Miriam Kiefer LL.M. held the opening lecture on the Unified Patent Court proceedings. The seminar series has generated a great interest among Japanese companies, with around 170 participants attending.

The three scheduled lectures focus on the procedural aspects of the proceedings before the Unified Patent Court and are primarily aimed at japanese patentees to consider their future filing and litigation strategies.

In her presentation, Miriam Kiefer LL.M. specifically addressed the general structure of the UPC and the usal course of the proceedings, including substantive law in the UPC Agreement and the language regime. She concluded her presentation with thoughts on the pros and cons of the opt-out. Numerous questions from the audience confirmed the great interest.

The seminar series will continue in September with Dr. Christof Augenstein.

The second lecture will focus on the general procedural rules as well as on the details of the proceedings, including but not limited of the importance of the interim proceedings. Finally, the third lecture in October will focus on special types of proceedings, as for example judgment by default, preliminary injunction proceedings and isolated nullity revocation actions, and will be concluded with comments on the costs of the proceedings.

All lectures will be held and recorded in English. Simultaneous translation into Japanese will also be available for participants.

PROGRAM OVERVIEW:

Tuesday, 20 September, 2022 – From the Statement of Defence to the Interlocutory Proceedings to the Oral Hearing

Speaker: Dr. Christof Augenstein

Language: English (simultaneous translation into Japanese)

Time: 9:00-11:00 (BST)/ 10:00-12:00 (CET)/ 17:00-19:00 (ST), via ZOOM

Tuesday, 4 October, 2022 – Special Types of Proceedings and Costs of Proceedings

Speaker: Dr. Christof Augenstein

Language: English (simultaneous translation into Japanese)

Time: 9:00-11:00 (BST)/ 10:00-12:00 (CET)/ 17:00-19:00 (ST), via ZOOM

Earlier in June, Miriam Kiefer LL.M. gave a preparatory overview of patent law reform in Germany in a 90-minute presentation.. “In the subsequent discussion on the development of case law at the instance courts, the importance of the reform for companies was reflected and discussed with the participants,” said Miriam Kiefer.

JETRO (Japan External Trade Organization), was established in 1958 by the Japanese Ministry of International Trade and Industry (MITI) to support and promote Japanese export efforts. In the 21st century, JETRO’s focus has shifted to promoting foreign direct investment in Japan and helping small to medium-sized Japanese companies maximize their global export potential. JETRO has 76 overseas offices in 55 countries worldwide and 48 offices in Japan, including headquarters in Tokyo and Osaka. In Germany, JETRO has three offices in Berlin, Düsseldorf and Munich.

The Pharmaceutical Intellectual Property and Competition Law Review: Christopher Weber and Dr Benjamin Pesch publish on recent developments of Intellectual Property and Competition Law in the pharmaceutical sector in Germany

The Pharmaceutical Intellectual Property and Competition Law Review is an annual hardcover and online guide covering legal and market developments in key jurisdictions in the pharmaceutical sector worldwide. As an “annual review”, the publication provides a detailed analysis of recent developments in legislation and its interpretation by national authorities around the world and aims to give users an insight into future trends.

It serves as a useful tool for managing global risks in this field and analyses the key elements of the relevant legal and regulatory frameworks in the major jurisdictions worldwide. With 11 chapters in total, the publication covers a wide range of important european and international jurisdictions. In Chapter 4 our partner Christopher Weber and our counsel Dr Benjamin Pesch highlight current developments in the german market based on their expertise in the pharmaceutical sector.

“The pharmaceutical sector is one of the most global industries, with many companies operating in dozens of countries with different legal jurisdictions and healthcare systems. In the field of patent law, there are several remarkable developments. On the one hand, there is the reform of Injunctive Relief Act and, on the other hand, the launch of the UPC is coming up. Therefore, opportunities and risks increase for patents that are part of this new system”, says Christopher Weber.

“We advise and represent our clients especially on this background and are particularly pleased that we can also present perspectives on antitrust and pharmaceutical law here”, adds Dr Benjamin Pesch.

A detailed overview about the German chapter is available here. Excerpts of the publication will also be published as part of our partnership on Lexology. If you are interested in a hardback copy of the publication, please contact our two authors:

weber@katheraugenstein

pesch@katheraugenstein

About The Law Reviews:

The Law Reviews is a network of experts covering over 108 areas of law in more than 130 countries worldwide, aimed at practitioners looking beyond their own borders for strategic solutions in foreign jurisdictions.

Progressive thinkers from the world’s leading law firms analyse global legal issues and their business implications. The Law Reviews is an essential resource for lawyers, in-house counsel, governments and corporate executives.

The editors of The Law Reviews are recognised international industry experts in key practice areas.

Dr Benjamin Pesch is named Rising Star 2022 again for the second year by Managing Intellectual Property

We are excited to announce that Managing Intellectual Property, one of the most internationally recognised IP publications, has awarded Dr Benjamin Pesch a Rising Star 2022. This is the second year in a row that Dr Benjamin Pesch has received the Rising Star award.

Each year, the IP Stars Rising Stars list highlights outstanding individuals with less than 10 years of professional experience in the field of IP. “Benjamin Pesch has successfully contributed to some of the most challenging and complex mandates in IP at our firm,” said Managing Partner Miriam Kiefer. “To achieve such a recognition again is a great sign that our IP team’s commitment to developing future talent has proven to be successful.”

The Rising Stars publication features more than 600 IP lawyers and over 300 law firms. Managing IP assesses IP practitioners based on independent weighted review of submitted research, market feedback, client and peer interviews, and publicly available information.

Patent on brewing barley: Still no clarity in the granting of bio-patents

Patent for a cool blonde – is that possible? Allocation of bio-patents still not finally clarified. The German’s favourite beverage is beer – or more precisely Pils beer, which celebrates its 180th birthday this year. We take this anniversary and the recent Bavarian October Festival (Oktoberfest) as an opportunity to take a look at the patent law side of the beverage.

So-called bio-patents, i.e. patents in the biotechnological field, are frequently at the centre of socio-political debates. Consumer and environment protection organisations submit complaints against biopatents in the food sector on a regular basis. The main focus is on the question of the patentability of plants from conventional breeding.

Patent protection for mutations?

Article 53 (b) EPC is highly relevant in clarifying this question. According to this article, patent protection for plant varieties or animal breeds as well as biological processes for breeding plants or animals is not possible. Microbiological methods and the products obtained by means of these processes, on the other hand, are patentable. This provision is intended to protect biological diversity.

In practice, this separation made by Art. 53 (b) is far more complex than it appears at first view and leads to the fact, often complained about by critics, that patent protection pushes back traditional breeding and diversity. Because: while the technical steps before or after the cross-breeding or selection process are patentable, every cross-breeding step is an infringement of patentability. As a result, technical selection procedures or product-by-process claims as well as technically induced mutations, which are patentable, are coming into focus.

Malting barley under patent protection.

For example, the big beer companies Heineken and Carlsberg have applied for more than a dozen patents on malting barley mutations. There is resistance to some of them, for example the patent “Beverages made from barley and malt with low dimethyl sulphide content” (EP2373154). An alliance of 35 action partners had filed a complaint against it before the European Patent Office (EPO). According to the complainants, in this patent a genetically random adaptation derived from conventional breeding is considered an invention. It was to be feared that the entire biodiversity of crops would be impaired if patent protection pushed back conventional breeding.

According to the patent description, the invention refers to barley plants that carry a mutation in the gene. This would allow the production of beverages with better taste profiles as well as a significant reduction in the thermal energy input in the beer production process.

EPO decision.

On 8 June 2021, the EPO Technical Board of Appeal rejected the appeal against the patent of Heineken and Carlsberg. In doing so, the Office confirmed the patentability of plants with mutations that influence flavour formation, but failed to clarify the fundamental question of the patentability of plants from conventional breeding.

In recent years, the EPO has repeatedly granted patents on plants that were not produced by genetic engineering but conventionally. In the present case, the natural mutation of the barley variety was triggered by artificially accelerating the mutation rate. That was enough for the Office to grant a patent. That was enough for the Office to grant a patent.

It becomes clear: although European patent laws prohibit claiming conventionally bred plants and animals as inventions, there are numerous loopholes. There is a lack of a clear distinction between accidental mutations and genetic engineering applications.

Criticism and consequences.

In Germany, the previous government of the current federal government made it clear that it did not want patents on conventional breeding. Most of the other states of the 38 contracting nations of the European Patent Office share this view. To enforce this at the patent office, however, a clear political directive is needed, which has not yet been forthcoming.

Unless things change, critics fear a displacement of classical breeding and of the affected farmers, breeders or beer producers will be driven out of business. Small private breweries in particular often do not have the necessary financial resources to apply for their own patents and to pay for the associated legal and court costs that may be required in case of a litigation.

Preparing the Unitary Patent System: Dr Christof Augenstein presents follow-up of an online seminar series at the Japan External Trade Organization (JETRO)

Last Tuesday, the third online seminar of a virtual event series took place on the invitation of the Japan External Trade Organization (JETRO).

The total of three consecutive lectures focused on the procedural aspects of the proceedings before the Unified Patent Court and are primarily directed at Japanese companies to define their future application and litigation strategies in Europe.

According to the kick-off seminar by Miriam Kiefer LL.M.in August (we reported in detail in our blog), in which the participants received an overview of the UPC received, the Seminarrseries under the leadership of Dr. Christof Augenstein in September. continued and now in October on the basis of a 3. Modules completed. A total of approx. 400 interested parties took part in the events.

All online presentations were held in English and recorded on video, and simultaneous translation into Japanese was also available to participants.

We would like to take this opportunity to thank you once again for the great interest shown and the professional organization of all three events.

As a follow-up, we are pleased to make the video recordings of the entire lecture series available to you once again in digital form:

1). Seminar vom 30. August 2022:UPC Overview

2). Seminar vom 20. September 2022:UPC Proceedings in Detail

3). Seminar vom 4. Oktober 2022: Special Types of Proceedings and Costs

Die Video-Aufzeichnungen können außerdem auch in Japansicher-Simultanübersetzung abgerufen werden:

1). Seminar vom 30. August 2022: UPC Overview

2). Seminar vom 20. September 2022:UPC Proceedings in Detail

3). Seminar vom 4. Oktober 2022: Special Types of Proceedings and Costs

VPP-Seminar: Dr Christof Augenstein, Sören Dahm and Miriam Kiefer lecture at VPP seminar “The Infringement Trial”

Last thursday until saturday, a three-day VPP seminar “The Infringement Trial” took place in presence in Berlin. Our partners Dr Christof Augenstein, Sören Dahm and Miriam Kiefer LL.M. lectured in rotation on the details of patent infringement proceedings.

In the seminar, which takes place once a year on this basis, the enforcement of technical IP rights in the practice was covered in detail and intensively discussed with the participants. The lecturers provided detailed knowledge about the process of an infringement case, from notification to warning, to court proceedings including enforcement – in each case from the perspective of the patent owner and the defendant. References to proceedings in front of the Unified Patent Court (UPC) were explained as well.

Our thanks goes to the audience for their participation in the VPP seminar, for the interesting input as well as the very valuable exchange around the lectures during these three days.

For those who could not make it in October, it will be on the 3. and November 4, 2022 at the Maritim Hotel in Munich, there will be another two-day event on infringement litigation before the Unified Patent Court (UPC). We would like to point out that this date is already fully booked, but an inclusion in the move-up list is possible. Detailed information and a comprehensive programme overview around the seminar can be found here.

VPP-Seminars 2023:

Due to the huge demand, planning for a continuation of the seminars in 2023 is already underway. As soon as the first date in January is fixed, we will inform you immediately.

Further information and seminar announcements are available on the VPP e.V. website.

JUVE Patent Ranking 2022: Kather Augenstein ranks again among the top IP firms and leading IP specialists in Germany

Every year, law firms are subjected to comprehensive evaluations in rankings. We are very pleased that Kather Augenstein was again able to defend its ranking of previous years in the current edition of the highly regarded JUVE Patent Ranking 2022.

Kather Augenstein continues to be awarded four stars in the second highest rating and is listed in the third highest group in the patent litigation/lawyers category.

In addition to the strength for litigation, JUVE Patent in this year’s evaluation particularly emphasizes the European orientation of our boutique firm in the upcoming representation of our clients before the Unified Patent Court. Read the full analysis here. Florian Müller’s (FOSS Patents) perspective on the JUVE ranking is also interesting, read here.

Furthermore, we are again represented in the category Leading Individuals: In addition to our senior partner Dr. Peter Kather, our partner Christopher Weber is again singled out as the leading advisor among Germany’s litigation attorneys in patent law.

A special thanks to our clients and peers, who give special recognition to no less than four of our partners and IP specialists. Dr Peter Kather “really gets to now the technology deeply” underlines a competitor, while Miriam Kiefer is rated as “very competent” and recognised for “her very good case management” by clients. Christopher Weber is valued for his special endurance, “he does not give up until he has found a legally viable solution in the client’s interest”, says a fellow competitor. In Christof Augenstein’s case, his “international view of interaction between of European patent court proceedings” is particularly in focus.

“The excellent rating of our firm is never the result of a single person, it is the result of our entire team. The current JUVE Patent Ranking 2022 is based on feedback of our clients and peers, which we are very proud of. We see this as a further incentive to face the challenge of the Unified Patent Court as a highly specialised boutique law firm and thank the experts for their recommendations”, says our Managing Partner Miriam Kiefer.

FCJ, Judgment dated 15 March 2022, X ZR 18/20 – Fahrerlose Transporteinrichtung: Delay in the nullity appeal

In its judgement of 15 March 2022, the Federal Court of Justice (FCJ) had to decide whether the patent proprietor had filed the ultimately decisive auxiliary request late. It was eagerly awaited whether the FCJ would follow the considerably stricter line of the European Patent Office or stick to its rather generous line.

I. Facts

The plaintiff had brought an nullity action against the patent in suit.

The Federal Patent Court came to the preliminary conclusion with the qualified notification that the patent in suit was patentable. Thereupon, the plaintiff filed further submissions (inter alia D19) and discussed them extensively. The patent proprietor responded for the first time with two auxiliary requests and extensively addressed the plaintiff’s new submissions. However, the patent proprietor did not address the decisive aspect in the appeal proceedings.

The Federal Patent Court upheld the patent in suit to a limited extent. The patent proprietor appealed against this decision.

In the grounds for appeal, the patent proprietor filed further auxiliary requests (inter alia B1). Only in a further statement did it file the ultimately decisive auxiliary request B6, which provided for only minor amendments to the auxiliary request (B1). Both auxiliary requests referred to a later decisive aspect, on which the invalidity plaintiff subsequently commented in writing and orally.

II. DECISION

In its decision of 15 March 2022, the Federal Court of Justice ruled that the decisive auxiliary request B6 meets the requirements of Section 116 Patent Act.

Relevant pursuant to § 116 para. 2 No. 1 Patent Act, according to the case law of the Federal Court of Justice, a further auxiliary request in the appellate instance is only valid if the patent proprietor was not induced to file this specific auxiliary request in the first instance.

The Federal Court of Justice did not consider the patent proprietor to have been induced to do so. Accordingly, the patent proprietor was not prompted to file the specific auxiliary request B6 in the first instance, neither by the qualified notification nor by the further objections of the plaintiff. The Federal Court of Justice justified the latter by stating that the decisive aspect in the appeal proceedings had not yet been addressed in the first instance. For the patent proprietor, it was not foreseeable that this specific aspect would be decisive later on account of the numerous further objections filed after the qualified notification and the scope of the plaintiff’s submissions.

Furthermore, the Federal Court of Justice did not consider auxiliary request B6 to be out of time. According to the reasoning, the patent proprietor was prompted to file auxiliary request B6 with the Grounds for Appeal. The Federal Court of Justice justified this by stating that the patent proprietor had already addressed the later relevant aspect in the Grounds for Appeal and had already addressed it in the auxiliary request B1. Moreover, it could have recognised that auxiliary request B1 might not be sufficient to overcome the prior art under discussion.

However, due to the prior discussion of the content and the only minor amendment of the auxiliary application, there was no reason to worry about a delay of the appeal proceedings after the decision, so that the requirements for a delay did not exist.

III. SUBSUMPTION

With this decision, the FCJ did not follow the strict line of the European Patent Office with the new Rules of Procedure of the Boards of Appeal (RPBA 2020). According to Art. 13 RPBA (2020), the patent proprietor must sufficiently excuse a late filing of an auxiliary request in the appeal proceedings. Whether a delay has occurred due to the later filing is irrelevant. Moreover, the boards of appeal apply the lateness provisions of Art. 13 RPBA (2020) extremely consistently. For German nullity proceedings, the FCJ has redefined the rules on lateness in the present judgment. However, due to the open wording of Sec. 116 (2) Patent Act, the Federal Court of Justice has leeway in any case to shape Sec. 116 2) Patent Act with further case law, depending on the individual case.

Carsten Plaga

The response of German politics regarding the ECJ’s decision on data retention in Germany

On September 20, 2022, Germany was condemned by the European Court of Justice (ECJ, judgment of September 20, 2022, Cases C-793/19, C-793/19, C-794/19). The subject of the ruling was the laws on data retention.

The proceedings to which the ECJ’s ruling of September 20, 2022 refers have only a short procedural history: The Cologne Administrative Court had ruled in the first instance that the service providers SpaceNet and Telekom Deutschland were not obliged to retain data relating to their customers’ telecommunications. The Federal Network Agency appealed to the Federal Administrative Court in Leipzig. The court suspended the proceedings and referred the decisive question of whether data retention under German law is compatible with European Union law to the ECJ itself. The ECJ’s decision was in favor of Germany – which is not surprising, because:

Back in 2016, the ECJ ruled on the subject of data retention and determined that unlimited storage of location and telephone data violates the Charter of Fundamental Rights of the European Union. In its decision against Germany, the ECJ remains true to this line and declares the German law on data retention to be contrary to the EU. The rules that impose preventive, or stock, obligations to store data that may at some point be necessary to fight crime or prevent threats to public safety are not compatible with Union law, the ECJ said. The ECJ also considers the indiscriminate storage of traffic and location data in advance not to be in compliance with EU law.

The Federal Ministry of Justice, in order to correct its mistake, has already prepared a draft bill. This simply repeals the provisions in Section 100g (2) of the German Code of Criminal Procedure (StPO) and Sections 175 to 181 of the German Telecommunications Act (TKG). Section 100g (2) of the Code of Criminal Procedure regulated the collection of traffic data. Sections 175 to 181 of the TKG govern, among other things, the obligations to store traffic data, the use of this data, and the guarantee of data security.

The new invention of the Ministry of Justice, i.e. the substitute for the deleted norms: the “investigative instrument of a security order”. The purpose of this instrument is to be able to order the securing of data in the case of significant criminal offenses, if the collection of the data can help to establish the facts of the case or the whereabouts of a defendant.

Thus, the data should not be able to be ordered on anyone, but only on a defendant – this is the first protective mechanism of the new norms. An accused person in the sense of criminal procedure only exists when there is a suspicion of a crime against a person and the investigating authorities initiate a formal investigation against him or her. A double reservation of rights for judges is also to be standardized as a further instrument of protection. First, the judge is to order the “freezing” of the data. This means that data already collected by providers for business reasons, as well as data accruing from the time of the court order, may no longer be deleted. Another judicial decision is supposed to be able to “thaw” this “frozen” data in turn: because only after the second judicial decision can the law enforcement authorities collect and evaluate the data for a certain period of time. Moreover, this should only be able to be ordered in the case of significant criminal offences.

Such regulations are in line with the case law of the ECJ, according to the ministry in the draft bill. The provisions of the TKG, but also of the TKÜG, BPolG, BSI-Gesetz, BKAG, ZFdG, EGStPO, JVEG are also to be amended in accordance with the ECJ’s decision. In its decision, the ECJ established clear criteria that must be fulfilled in order for data storage to be lawful. The regulations are to be adapted to this.

In its decision, the ECJ established clear criteria that must be fulfilled in order for data storage to be lawful. However, there is currently no agreement on the many changes – so it remains to be seen which regulations and when they will come into force.

Can a single company have an exclusive right to the term “Black Friday”?

Since 2013, the term “Black Friday” has been registered as a trademark in the trademark register, so that a single company has the right to advertise with it. The brand comprises more than 900 goods and services – finding a gap for one’s own product in order to promote it with a discount on Black Friday seems almost impossible.

If one resisted the registration and nevertheless advertised with Black Friday, the warning was often not long in coming. This could now change, because according to the judgment of the Berlin Appellate Court (KG Berlin Urt. V. 14.10.2022, Az. 5 U 46/21, not legally binding), the trademark is now to be cancelled, to the delight of many, with the consequence that the term “Black Friday” can once again be used freely.

Super Union Holdings Ltd., which is headquartered in Hong Kong, registered the term “Black Friday” as a trademark with the German Patent and Trademark Office (DPMA) in 2013. Seitdem hielt das Unternehmen die Markenrechte für den Begriff. As a result, companies that offered discounts to ring in the Christmas shopping season on the last weekend of November were warned off by Super Union Holdings Ltd. for using the term “Black Friday.” To combat these warnings, some companies, including the website www.blackfriday.de, applied for cancellation of the trademark. Zunächst wurde dem Antrag stattgegeben.

Das wollte die Super Union Holdings Ltd. aber nicht auf sich beruhen lassen und wendete sich an das Bundespatentgericht. Dieses entschied, dass die Löschung der Marke teilweise rechtswidrig war. Die Entscheidung (inzwischen vollumfänglich bestätigt durch den BGH) wurde auf § 8 para. 2 No. 2 MarkenG gestützt. The reason for the partial cancellation of the trademark was therefore the need to keep it free. The need to keep the trademark free exists if the competitors have a legitimate interest in describing their own services with the trademark designation. However, the judges only recognized this interest in the area of advertising and electronic products. There remained over 900 other goods and services that were not allowed to be described with the term “Black Friday”. The Asian company therefore still had the trademark rights for the term “Black Friday” in Germany.

The website www.blackfriday.de was not satisfied with this and brought an action for forfeiture before the Berlin Regional Court. Ziel der Klage: die Erklärung der Markeneintragung für verfallen, also das Feststellen der fehlenden Benutzung der Marke „Black Friday“ durch die Super Union Holdings Ltd. Die Berliner Richter haben zu Gunsten der Klägerin entschieden, was das Kammergericht Berlin nun am 14. Oktober 2022 bestätigte.

The Berlin Regional Court based its decision on § 49 Abs. 1 MarkenG. Danach muss eine Marke tatsächlich benutzt werden, um als solche anerkannt zu bleiben. In this respect, the burden of presentation and proof lies with the defendant. This is precisely where the ruling ties in: Super Union Holdings Ltd. has not met its burden of presentation and proof. It failed to convince the judges to actually use the “Black Friday” mark instead of just using it descriptively. Trademark protection does not apply in the present case because the term registered as a trademark must function for customers as an indication of the services of a particular company – which is not the case with “Black Friday”. The term precisely does not refer to the defendant or its services, but to a generally applicable discount promotion.

The decision of the Berlin Appellate Court (KG Berlin Urt. V. 14.10.2022, Az. 5 U 46/21) is not yet final. It remains to be seen whether Super Union Holdings Ltd. will take action against this or resign and finally have the once registered trademark “Black Friday” cancelled.