Latest News.

Court of Appeal: Requirements for the withdrawal of an opt-out under Art 83 (4) UPCA

CoA of the UPC, decision of 12 November 2024, UPC_COA_489/2023 and 500/2023 – AIM Sport Development / Supponor et al.

I. Fact of the Case

The patent in suit had been opted out on 12 May 2023 (during the “sunrise period”). The opt-out was entered on the UPC register on 1 June 2023. On 5 July 2023, the Plaintiff applied to withdraw the opt-out.  On the same day, the Plaintiff filed an infringement action regarding the infringement of the patent in suit and an application for provisional measures against the Defendants. The Local Division Helsinki dismissed the infringement action and the application for provisional measures on the grounds that the UPC has no jurisdiction due to its opt-out of 12 May 2023. The withdrawal is ineffective because, at the time of the opt-out and the withdrawal of the opt-out, actions brought in 2020 were still pending before the German national courts.

II. Decision of the Court of Appeal

The Court of Appeal overrules the decision of the court of first instance.

The wording, structure, object and purpose of Art. 83 UPCA lead to an interpretation of the phrase “Unless an action has already been brought before a national court” in Art. 83 (4) UPCA as referring to an action brought before a national court during the transitional regime. Earlier national actions (prior to the entry into force of the transitional regime) are not covered by the restrictions on withdrawal of the opt-out.

The Court of Appeal referred to the rules of interpretation set out in Art. 31 (1) of the Vienna Convention on the Law of Treaties when interpreting Art. 83 UPCA and held that the term “action” in Art. 83 (4) UPCA is not to be construed in isolation but in the context of Art. 83 UPCA as a whole. In this respect, the Court sees no reason to interpret the term “action” in paragraph 4 differently from the term “action” in paragraphs 1, 2, and 3, i.e., as an action brought during the transitional period.

The Court of Appeal stated furthermore that this interpretation is also in concordance with the object and purpose of Art. 83 UPCA.

The possibility of withdrawal of the opt-out pursuant to Art. 83 (4) UPCA aims to enable a patent holder to reverse the consequences of an earlier opt-out and use the new UPC system with its advantages as soon as it has familiarized itself with the functioning of the UPC. The restrictions on the opt-out and withdrawal options under Art. 83 (3) and (4) UPCA intend to prevent an abuse of this system through an inadmissible change of jurisdiction. Given this purpose, the phrase “an action has already been brought before a national court” is to be interpreted as an action brought before a national court after the entry into force of the transitional regime. Abuse is not even possible before the existence of the transitional regime.

At the same time, the Court of Appeal clarified that any other interpretation would contradict the object and purpose of the opt-out and withdrawal system and lead to unequal treatment of holders of patents that have been subject to national proceedings in the past, with the consequence that if a patent holder whose patent had been subject to proceedings before a national court decided to opt-out, it could not withdraw its opt-out, thereby being deprived of the possibility of ever benefiting from the UPC system and its advantages.

Additionally, the Court of Appeal stated that the term “action” in Art. 83 UPCA refers not only to infringement and revocation actions but to all actions mentioned in Art. 32 UPCA for which the UPC has jurisdiction.

III. Conclusion

This decision increases the attractiveness of the UPC to patent holders by allowing them to return to the UPC system under certain conditions, even if their patents were subject to earlier national proceedings and they have opted out of the new system.

Anda Sopona

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On the requirements of an imminent patent infringement within the meaning of Art. 62 (1) UPCA

Local Division Düsseldorf, decision dated 06 September 2024, UPC_CFI_165/2024, UPC_CFI_166/2024 – Novartis / Genentech

In proceedings concerning the granting of provisional measures, the Local Division Düsseldorf had to deal with the question of when a patent infringement within the meaning of Art. 62 (1) UPCA is “imminent”.

Facts of the case

The Applicant is the proprietor of the patent in dispute, which relates to a pharmaceutical formula concerning antibody biosimilars. The Defendants belong to a group of companies. The Defendant in the parallel proceedings UPC_CFI_166/2024 is the parent company of Defendants 1) to 7) in proceedings UPC_CFI_165/2024. The parent company holds a 100% share in Defendant 1), which is responsible for marketing and distribution in Europe. Defendant 1) is a 100% shareholder in Defendants 2) to 7). The parent company has developed a biosimilar product containing the antibody omalizumab (hereinafter “attacked embodiment”), the phase III clinical trial of which was based on a settlement with the Applicant’s product containing the patented formula. Between July and October 2023, the Defendants filed actions for revocation of the patent in suit in several countries. In November 2023, a representative of the Defendant stated in a Korean healthcare news portal that the Defendant’s goal was to be the first company to supply this antibody biosimilar to major countries. Shortly thereafter, the Applicant sent an authorization enquiry to the Defendants. The Defendants replied that their product did not make use of the teaching of the patent in suit. Furthermore, the patent in suit was not legally valid. On 25 March 2024, the parent company published a press release in which it expressed its intention to launch the product on the European market as soon as possible if the European marketing authorization was granted. In the same month, the Defendants took part in a trade fair in Belgium, where they offered information about the attacked embodiment at their booth. On 10 April 2024, Defendant 2) sent an email to a potential customer informing it about the positive signal for an imminent granting of a marketing authorization and at the same time offering to keep him informed about relevant news.

The marketing authorization for the attacked embodiment was granted by the European Medicines Agency on 16 May 2024. The Defendants then published a further press release about the market authorization on 24 May 2024 and announced that they would rapidly expand their market share. The Applicant then applied for the adoption of provisional measures.

Decision of the Local Division

The Local Division rejects the application for provisional measures on the grounds that there is no imminent patent infringement within the meaning of Art. 62 (1) UPCA.

In order to assess whether a patent infringement is imminent, the overall circumstances of the specific case must be considered. There must be certain circumstances that indicate that the potential infringer has already created the complete conditions for the patent infringement to take place. The Applicant bears the burden of presentation and proof for this.

In the Local Division’s view, the decisive factor is therefore whether the Defendants’ conduct leads to the conclusion that it is highly likely that they intend to enter the market during the patent term without further ado. This is the case if the Defendants have made a concrete offer on the market. The Local Division denies this. It would have been necessary for the Defendants to advertise the product with all approvals and fixed prices so that customers could place an order. However, potential customers are familiar with the regulations in the pharmaceutical industry and know that only a vague statement on market entry is available if pricing has not yet been finalized.

Thus, from the Local Division’s point of view, not all conditions had been met for the product to be offered directly on the European market. However, the announcement after market approval was granted is not yet sufficient, as there was no specific timeframe for price negotiations or a situation in which samples were sent to potential customers, for example.

Conclusion:

The Local Division’s decision was issued in connection with pharmaceuticals, which must fulfill further regulatory requirements in order to enter the market. However, the question of when the actual indications of a competitor entering the market have become so concrete that the property right holder can take action against it on the basis of the so-called risk of first entry is of fundamental importance.

As the facts of the case here had to be treated in a special way, it remains to be seen to what extent a similarly strict standard should be applied in other factual constellations. In any case, the facts of the case should be examined in detail to determine whether all requirements have already been met or steps have been taken to offer the product directly on the market.

Dr Melissa Lutz

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Service of the statement of claim against foreign defendants in proceedings before the UPC

In a series of decisions, the Court of Appeal of the Unified Patent Court (UPC) has dealt with the question of the requirements for service of process on defendants domiciled outside the UPC and EU member states.

I. Facts

The defendants sued were both defendants domiciled in the UPC member states (in particular the Federal Republic of Germany; hereinafter referred to simply as “European defendants”) and defendants domiciled neither in the UPC member states nor in the EU member states (Asia; hereinafter referred to simply as “Asian defendants”). All defendants are independent companies within the overall group structure. In most cases, the Asian defendant was located higher up in the group structure (parent company).

II Question

The plaintiffs were of the opinion that the action could be served at the registered office of the European defendant with effect vis-à-vis the Asian defendant, as they are interwoven within the group structure.

In this respect, they first referred to R. 271.5 lit a) UPC Regulation, according to which service within the UPC contracting member states is to be effected at the following place (emphasis added):

“where the defendant is a company or other legal person, at its registered office, central administration or principal place of business within the Contracting Member States or at any other place within the Contracting Member States where the company or other legal person has a permanent or temporary place of business”

The differentiation within the first variant is not relevant in the present case, so that in the following only the “head office” and “registered office” of a defendant are mentioned.

Furthermore, the defendants referred to R. 275 EPG VerfO. This regulates in para. 1:

“Where service could not be effected under section 1 or 2, the court may, on application by the plaintiff, by order authorize service by an alternative method or at another place if it finds that good cause exists for authorizing service by a method or at a place not otherwise provided for under this chapter.”

Paragraph 2 states:

“On a reasoned application by the plaintiff, the court may order that steps already taken to bring the application to the defendant’s attention by an alternative method or at another place shall constitute valid service.”

III Local chambers refused effective service

The local divisions stated in their orders that the application of R. 275 EPG VerfO requires a prior attempt at service in any case. This attempt at service could not be made on another legal entity, as there would otherwise be a risk that higher-ranking service regulations would be undermined (see, for example, order of the Local Chamber of Mannheim dated 09.02.2024 – UPC_CFI_223/2023).

IV. Relevant ECJ case law:

The local chambers referred primarily to the case law of the ECJ.

The Court has already clarified in its judgment of 19.12.2012 – C-325/11, EuZW 2013, 187 – Alder that the national legislator may not override higher-ranking rules on service, such as the EC Regulation (EC) No. 2020/1784 (then still (EC) No. 1393/2007). National service regulations must therefore be interpreted in such a way that they do not deliberately limit the scope of application of higher-ranking service regulations, for example by stipulating that in certain cases a document is not to be physically transmitted abroad. If the national provision cannot be interpreted in accordance with European law, it is contrary to European law.

Furthermore, the ECJ recently ruled that Art. 47 of the Charter of Fundamental Rights of the European Union and Art. 101 TFEU in conjunction with the EU TFEU (still Regulation (EC) No. 1393/2007 […]) must be interpreted as meaning that

“a parent company against which an action for damages for harm caused by an infringement of competition law has been brought has not been validly summoned if the document instituting the proceedings was served at the address of its subsidiary established in the Member State in which the action was brought, even if the parent company forms an economic unit with that subsidiary.”

ECJ, judgment of 11.07.2024 – C-632/22, NZKart 2024, 446 – Volvo

The ECJ thus reinforces the independence of companies, even if they belong to the same group.

The decision is also transferable to areas of law other than antitrust law due to its legal connection to Art. 47 of the Charter of Fundamental Rights and the EU Regulation, see para. 54 of the decision. Art. 47 of the Charter of Fundamental Rights also grants its rights to defendants from non-EU states, as Art. 47 is not based on where someone is domiciled, but on whether their rights are affected within the EU, i.e. also within a European court case.

V. UPC Court of Appeal confirms that service was not effective

Taking into account the cited case law of the ECJ, the UPC Court of Appeal ruled that an attempt at service must first be made in accordance with procedural law before service by alternative means or at an alternative place (R. 275 UPC CPR) is permissible. Like R. 275.1 EPG VerfO, R. 275.2 EPG VerfO presupposes an attempt at service provided for by procedural law. The wording leaves this open. However, in the opinion of the UPC Court of Appeal, the system and the risk that international rules on service of process are undermined (see above) speak in favor of this.

The UPC Court of Appeal then examines the question of whether there is a valid attempt at service at the European defendant’s registered office with effect vis-à-vis the Asian defendant pursuant to R. 271.5 (a) UPC Regulation. Strictly speaking, if this question had been answered in the affirmative, service would already have been effected ipso iure. The plaintiffs therefore took the view in some cases that R. 275 para. 2 UPC Regulation also gives the court the (declaratory) power in this case to order that service has been validly effected.

The UPC Court of Appeal ruled that it was clear from the wording of R.271.5(a) UPC CPR that (emphasis added)

“it applies only to service on companies or other legal persons having their registered office, central administration or principal place of business in the Contracting Member States. This is made clear by the choice of wording in the second part of the sentence, which refers to “the company”. The reference to “the company” refers to the first part of the sentence in which such a company is defined, i.e. a company with its registered office, central administration or principal place of business in the Contracting Member States.

The wording of the second part of R.271.5 (a) of the CPR thus provides for places where service can be effected in the UPC territory as an alternative to service on a company having its registered office, central administration or principal place of business in the Contracting Member States. This provision therefore provides for alternative places of service for a defendant domiciled in the UPC territory. Service may then be effected at any other place within the Contracting Member States where the company or other legal person has a permanent or temporary place of business.”

  1. According to the UPC Court of Appeal, Sec. 271.5 lit a) UPC Regulation is therefore in any case only applicable to defendants that have their principal place of business within the Contracting Member States. European defendants can therefore not be a permanent or temporary place of business of an Asian defendant.

In this respect, the UPC Court of Appeal basically concludes an interpretation of 271.5 lit a) second alternative UPC Regulation, according to which an Asian defendant (head office outside the UPC contracting member states) can ever be served with an action within the contracting member states, even if it claims to have established a temporary or permanent place of business there.

VI Evaluation and practical implications

Due to the separation of the defendants under company law, it is still legally comprehensible that no service can be made on the parent company in the case of subsidiaries (see ECJ Volvo above).

However, in the author’s opinion, the further interpretation of the UPC Court of Appeal appears too narrow, particularly in view of the relevant ECJ case law (Aldar). The ECJ makes it clear that it is merely a matter of preventing a document, such as an action, from actually reaching the defendant physically (so-called fictitious domestic service). However, if a defendant has a temporary or permanent place of business within the contracting member states, he must adhere to this and accept service against him. Of course, it must be examined in each individual case whether a place of business exists within the meaning of the provision.

Accordingly, the German ZPO permits service at any place where a person is found, cf. section 177 ZPO. In trade fair matters, Section 178 (1) ZPO can also be applied. A trade fair stand is usually considered a business premises in this sense.

According to the case law of the UPC Court of Appeal, however, it would be impossible, for example, to quickly serve a preliminary injunction in proceedings on interim measures, for example at the trade fair stand of an Asian defendant, see R. 276 EGP VerfO, which refers to the previous rules on service, i.e. also R. 271.5 lit a) EGP VerfO. This is particularly necessary if the defendant is not yet represented by a lawyer.

It is therefore to be hoped that the UPG Court of Appeal will take another look at this case law in the future.

Robert Knaps

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JUVE Patent Ranking Germany 2024 – 5 stars for Kather Augenstein

We are delighted that Kather Augenstein has been awarded 5 stars in the category Litigation: Lawyers in the JUVE Patent Ranking Germany 2024 published today. With this special recognition, our boutique law firm has achieved the top Tier 1 position this year and is thus one of the leading IP specialists in Germany.

Congratulations to our Recommended and Leading Individuals, Dr. Peter Kather, Dr. Christof Augenstein, Christopher Weber and Miriam Kiefer LL.M., as well as to the entire Kather Augenstein team for this outstanding achievement.

In this year’s evaluation, JUVE Patent emphasizes the particular clout of our team of experts in complex proceedings before national courts and the UPC. “The team is already one of the most active at the new court, handling a significant number of high-profile cases across a wide range of industries, including mobile communications, automotive and medical technology.”

Particularly mentioned in the current ranking are: Christof Augenstein, who is described as “creative, practical and responsive” by clients and as “friendly but firm” by competitors; Peter Kather, who is valued as “very client-focused with outstanding strategic and procedural advice” by clients and as “very experienced” by competitors; Miriam Kiefer, who is recognized for her “excellent case management and ability to respond to client needs”; and Christopher Weber, who is singled out for his “technical expertise and international savvy”.

You can find the complete ranking here.

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Juristinnen erzählen – Dr Katharina Brandt as guest in ITM Münster’s interview podcast

In the 10th episode of  Juristinnen erzählen, hosted by the Institute of Information, Telecommunications and Media Law at the University of Münster, Dr Katharina Brandt has the opportunity to talk about how she started her career at Kather Augenstein.  Interviewed by Katharina Börms, she shares her enthusiasm for patent law and some of the challenges she faced as a young lawyer.

During her law studies with a focus on information, telecommunications and media law (ITM) at the University of Münster, Katharina completed additional training in intellectual property law. After her first exam, she completed a doctorate in patent law and joined Kather Augenstein as an associate in 2021. Since then, she has advised and represented national and international companies in various industries in all areas of intellectual property, with focus on patent law.

This interview is of particular interest to young professionals and anyone who is still in training.

We wish you pleasant listening! Click here for the podcast.

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Provisional protection of secrecy in summary proceedings before the UPC

Local Division Düsseldorf, procedural order of 23 February 2024 – UPC_CFI_463/2023 – 10x Genomics/Curio Bioscience

In its procedural order of 23 February 2024, the Düsseldorf Local Court dealt with the question of how provisional protection of secrets is to be guaranteed in urgent matters.

I. Facts of the case

On 4 December 2023, Applicant filed an application for interim measures with the Local Division Düsseldorf.

Before the expiry of the opposition period (R. 209.1 (a) VerfO) and before filing of the notice of opposition, Opponent requested that measures be ordered for the provisional protection of confidential information. By procedural order dated 14 February 2024, the Local Division deferred its decision on the requests until Opponent had filed its opposition and submitted a request for the protection of confidential information. In this context, it also explained the detailled procedure for the protection of confidential information provided for by the case management system, according to which the Division can initially issue orders for the provisional protection of (allegedly) confidential documents.

By filing the opposition together with the Exhibits on 15 February 2024, Opponent applied for protection of the confidential information contained therein. In a procedural order dated 16 February 2024, the Local Division granted Applicant’s authorized representatives named in the proceedings access to the unredacted version of the documents submitted and obliged them to confidentiality – also vis-à-vis Applicant – under threat of a penalty payment. At the same time, the parties were given the opportunity to comment on which persons should have access to the information until the final decision on the protection of confidentiality.

Opponent requested that access to the information be restricted to four legal representatives known by name who undertake not to take part in any license negotiations in the field of the teaching of the patent for a period of five years. On auxiliary basis, an employee from Applicant’s legal department, who is also not involved in any business decisions, should also be granted access, whereby this employee should also undertake not to take part in any license negotiations in the field of the teaching of the patent for 5 years.

Applicant, on the other hand, requested access to the (allegedly) confidential information for the lawyers of the law firm mandated by Applicant and for two named, reliable persons at Applicant. On auxiliary basis, it requested access for the lawyers of the law firm mandated by Applicant actually handling the case, two paralegals and the two named, reliable persons at Applicant.

II. Order of the Local Division Düsseldorf

In the provisional confidentiality order, the Local Division Düsseldorf restricts access to the redacted information until a final decision on the request for protection of confidentiality on the part of Applicant to the lawyers of the law firm mandated by Applicant actually dealing with the case, two paralegals and one of the named, reliable persons at Applicant. These persons are obliged to maintain confidentiality also vis-à-vis Applicant. The information may not be disclosed outside the proceedings. Applicant must ensure that only the reliable person has access to the information.

Based on Art. 9(1) and (2)(a) Directive (EU) 2016/943, Art. 58 UPCA and R.262 ROP, the Division finds that access to (alleged) trade secrets can be restricted to a limited number of persons. Until a final order on protection of confidentiality is issued, access can be further restricted in order to ensure effective protection of trade secrets. The request for protection of confidentiality can also be discussed with the party with the redacted versions of the documents concerned.

In the present case, however, the special characteristics of the summary proceedings must not be disregarded. Deadlines for briefs are short. Extensions of deadlines are generally ruled out and the date for the oral hearing is often scheduled at short notice. All of this must be taken into account when determining the group of people who should have access to the information in order to ensure a fair procedure. Accordingly, the party affected by the order on provisional protection of confidentiality order must be fully able to work, taking into account the confidentiality interests of the opposing party, and be in a position to comment on each point raised by the opposing party in the case. In accordance with its order of 14 February 2024, the Local Division thus comes to the preliminary conclusion that, as a rule, four attorney representatives (two partners and two associates to support them), two patent attorney representatives and three representatives of the client must be granted access in summary proceedings, whereby this group of persons can be extended by two paralegals if necessary. However, this is again subject to a case-by-case examination, as the group of persons may not exceed the number necessary to ensure that the right of the parties to the proceedings to an effective legal remedy and a fair procedure is observed, in accordance with R. 262.6 s. 1 of the Rules of Procedure.

Applying this to the present case, the Local Division finds:

1). Applicant’s patent attorneys are not to be granted access, as the redacted information is of a purely commercial and non-technical nature.

2). Insofar as Applicant requests access for three partners and one associate of the mandated law firm, the Local Division has no objections. Restricting access to legal representatives who are not involved in pending proceedings concerning the same area of law before the UPC would unreasonably restrict Applicant’s choice of legal representatives. In addition, the legal representatives would be significantly hindered in the exercise of their profession without this being justified by overwhelming interests on Opponent’s side. Sufficient protection is guaranteed by the confidentiality order under threat of coercive measures.

3). In addition, access must be restricted to the employee at Applicant named in Applicant’s auxiliary request, who, according to Applicant, is the main coordinator of its patent disputes and the central internal person in the day-to-day management of Applicant’s litigation. Both Art. 9 Directive (EU) 2016/943 and R262a.6 ROP stipulate that at least one natural person of the party must be granted access. The fact that this employee may be involved in commercial decisions of Applicant, without this being explained in more detail, does not justify a different decision. The confidentiality order under threat of penalty payments also offers sufficient protection in this respect. Accordingly, Applicant does not have to prove that it has implemented procedures to protect the redacted information. Ordering an obligation not to take part in any license negotiations in the field of patent teaching for five years would disproportionately interfere with Applicant’s right to exercise his profession.

Kristin Jochheim & Charlotte George

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Leaders League Rankings 2024 – Kather Augenstein awarded again as one of the leading law firms for patent and trademark litigation in Germany

In this year’s Leaders League Rankings 2024, Kather Augenstein has again been recognised as one of the leading law firms in intellectual property law for patent and trademark litigation.

In the latest Rankings 2024, the Kather Augenstein team was rated “excellent” Tier 1 in patent litigation category and “highly recommended” in the field of trademark litigation.

Further information about the team can be found here.

Latest News.

The Pharmaceutical Intellectual Property and Competition – Christopher Weber and Dr Benjamin Pesch publish on recent developments in intellectual property and competition law in the pharmaceutical sector in Germany

The Pharmaceutical Intellectual Property and Competition, now in its 5th edition, rovides a practical overview of pharmaceutical intellectual property issues, including the nexus of patents, exclusivity rights and related competition issues.

With a focus on current developments, the guide serves as a valuable tool for managing global risks in this field – analysing key legal and regulatory aspects in major jurisdictions worldwide.

Our team of authors, Christopher Weber and Dr Benjamin Pesch, have again written the German chapter in this year’s edition, which covers the principles and current developments of intellectual property and competition law in the German pharmaceutical sector.

“The Pharmaceutical Intellectual Property and Competition” is published this year on  Lexology, the exclusive platform for all The Law Reviews publications.

Read the editor’s foreword here.

Christoper Weber and Dr Benjamin Pesch will be pleased to answer any detailed questions you may have.

Latest News.

CoA of the UPC – Decisive circumstances for changing the language of the proceedings before the UPC

CoA of the UPC, decision of 17 April 2024 – UPC CoA 101/2024 – 10x Genomics Inc. / Curio Bioscience Inc.

In its decision of April 17, 2024, the Court of Appeal of the Unified Patent Court laid down guidelines for a request to change the language of the proceedings pursuant to Art. 49 (5) UPCA, R. 323 RoP.

I.         Facts of the case

The parties are involved in a summary proceeding before the Local Division Düsseldorf. Both parties are US-companies. Opponent was represented by a law firm based in London. However, Opponent’s legal representative is also admitted to the bar in Germany and is capable of speaking German. Opponent claims to be an SME.

After the oral hearing, Opponent filed a request to change the language of the proceedings to English, which the court of first instance rejected. Opponent appealed against this decision.

II.       Decision of the Court of Appeal

The Court of Appeal overrules the decision of the court of first instance.

The court clarifies that when deciding on a request to change the language of the proceedings, all relevant circumstances have to be taken into account. Relevant circumstances should primarily be related to the specific case and the position of the parties.

Of particular importance is the language of the patent which the patentee (here: Applicant) chose when filing the patent application. Having chosen a language, the patentee has to take into account that it might have to carry out proceedings in that language.

The language of the concerned technology field, i.e. the language primarily used in the technology field, is also relevant.

Finally, the nationality or domicile of the parties is a relevant party-related circumstance. A party must be able to fully understand what is submitted on its behalf by its representative and by the opposing party.

In contrast, the language skills of a party’s representative are not relevant. The nationality of the judges is also not a relevant aspect.

If the outcome of balancing the interests of the parties is equal, the position of the opponent  is decisive.

Applying these general principles, the Court of Appeal came to the conclusion that Opponent’s interests in the change of the language of the proceedings prevail. In particular, having to negotiate in a different language is a heavier burden for Opponent than for the Applicant. This is because Opponent is in any case a smaller company than the Applicant.

III.     Conclusion

In its decision, the Court of Appeal lays down guidelines for a request to change the language of the proceedings. The language of the patent and the language of the technology field concerned are of particular importance here.

If a party does not speak the language of the proceedings, this circumstance is not compensated for by the language skills of its legal representative.

It remains to be seen whether the use of the English language in proceedings before the UPC will increase after this decision. Since European patents are often written in English language, this is an aspect that might speak for English as language of the proceedings. However, this is not the only relevant aspect.

In this respect, it also has to be considered that the Plaintiff generally has the possibility to determine the language of the proceedings according to R. 14.2 RoP.

Marco Berlage

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Undercover at spoga+gafa 2023 – Kather Augenstein and Uexküll & Stolberg secure favourable judgement on the cost for Stiga

Successful at trade fair. On behalf of our client Stiga S.p.A., we were able to obtain a preliminary injunction against Topsun Europe for an infringing act at the “spoga+gafa 2023 – die Garten-Lifestyle-Messe” in Cologne. The infringement was confirmed by the Higher Regional Court of Düsseldorf in a favourable judgement on the costs, after Topsun was liquidated.

Patent infringements at trade fairs are always something special. They have the advantage that preliminary injunctions – if founded – can be issued exparte partes and at short notice. Service and enforcement can also take place at the infringer’s trade fair booth. However, the infringement, i.e. the actual offering, can often only be proven during the trade fair itself. A visit to the trade fair stand and quick actions are essential. We were therefore in action at the trade fair for our client Stiga against Topsun Europe, the Czech subsidiary of the Chinese company Zhejiang Zhongjian Technology Co. Ltd.

Stiga is well known to gardeners and gardening enthusiasts. The company, based in Castelfranco Veneto (TV), Italy, is a leading European manufacturer and distributor of garden machinery and equipment, and is the European market leader in ride-on category. Stiga is the owner of a large number of industrial property rights, including European Patent EP 2 193 703 B1 (EP 703).

According to DIN standards, lawn tractors must have a device that checks the presence of the driver and brings the engine to a standstill within the prescribed space-time limit when the driver leaves the driver’s seat. The subject of EP 703 is such a safety device that requires no adjustment and ensures correct operation of the tractor on slopes or rough terrain.

Stiga had already examined tractor models from Zhejiang Zhongjian Technology’s “TOPSUN series” in the run-up to the trade fair and found four of them infringing EP 703. However, no business activities in Germany were known until the trade fair. Our client therefore instructed us to check the trade fair presentation for possible infringements and to assert Stiga’s rights if necessary. Our visit to the Topsun Europe’s booth shortly after the opening of the trade fair brought certainty – an infringing lawn tractor was presented there and all infringing models were shown in a brochure, which an employee showed on request. A warning letter was served on the same day, which was a requirement for the subsequent measures.

The Regional Court of Düsseldorf issued the preliminary injunction we applied for just one day later. The enforcement followed in the morning of the third day of the trade fair, just 48 hours after the opening. Topsun Europe had to remove the presented model and the brochures from the booth and attach a disclaimer to an advertising banner.

The injunction was confirmed in the first instance following an opposition and an oral hearing. After Topsun Europe had been liquidated and deleted from the Czech commercial register, the parties agreed in the appeal that the proceedings were settled and only disputed regarding the costs. This judgement was also in our client’s favour. In a detailed and well-reasoned decision, the Higher Regional Court Düsseldorf was convinced that the disputed lawn tractors infringed the patent in suit and that Topsun Europe should therefore be ordered to bear the costs.

It should also be mentioned that both courts had no doubts about the validity of EP 703. This is remarkable, as the German courts generally only consider the validity to be sufficiently secured if a first-instance decision on the validity has already been issued. However, this has not yet been the case.

However, only the Federal Patent Court will make a final decision on the validity. Zhejiang Zhongjian Technology filed a nullity action in October 2023, the decision on which is still pending. Based on the progress to date, however, we are optimistic that this decision will also be in Stiga’s favour. Stiga continues to defend itself against the distribution of the infringing products of Zhejiang Zhongjian Technology in Europe. It is currently conducting another lawsuit against them in Italy, before the Tribunal of Turin, for infringement of EP 703 and two further patents.

In the proceedings, our clients were supported by Mr. PA Lars Manke from Uexküll & Stolberg. Christopher Weber and Sophie Prudent from Kather Augenstein argued on behalf of Stiga.