Update: Austria is close to Ratification of the Protocol on Provisional Application of the Agreement on a Unified Patent Court

In its report of 11 November, the Parliamentary Committee on Research, Innovation and Digitisation of the Republic of Austria has unanimously decided to recommend to ratification of the Provisional Application of UPC Agreement (PAP-Protocol) to the plenary (see attached report). The PAP-Protocol is now listed at position 12 on the agenda of the 19 November 2021 session of the Austrian Parliament,. so it is very likely that the Parliament will adopt the PAP end of this week.

The establishment of the Unitary Patent (“patent with unitary effect”) and associated Unified Patent Court will ensure that patentees can enforce and defend their patents before a single court – the Unified Patent Court. Austria was the first member state to agree to the multilateral Agreement on a Unified Patent Court (UPC) (deposit of the instrument of ratification on 6.8.2013).

In order for the Unified Patent Court to be operational from the very beginning, extensive preparations have to be made. This requires a provisional applicability of parts of the UPC in a preliminary phase before entry into force.

For this purpose, the Preparatory Committee of the Unified Patent Court has submitted the Protocol on Provisional Application (PAP). The present Protocol is now to become applicable to Austria by means of the present legal act.

The provisional implementation during a “run-up” period allows to make extensive preparations so that the Unified Patent Court can already start its work on the first day of entry into force. This would be a further step on the way to the Unified Patent Court, which is then expected to start its work at the end of 2022/beginning of 2023.

We already posted a detailed report on the decisions in Germany in our blog in July this year. We offer the entire analysis for download in English.

On the current status of the UPC, our partner Christof Augenstein interviewed the Chairman of the Preparatory Committee, Alexander Ramsay, during the AIPPI Online Congress on 12 October, 2021. In its latest issue 11,The Global IP Matrix had pre-published a summary by Dr Augenstein on the current status of the UPC to set the scene for Panel 31.

Federal Court of Justice: quick release skewer – Campagnolo’s legacy

The Federal Court of Justice had to decide whether the patent in suit was novel and inventive compared to quick release skewer known from the prior art due to the special design of a part (the lever) (Federal Court of Justice, judgement of 15.06.2021 (Ref. X ZR 61/19) – Laufradschnellspanner).

1. THE PATENT IN SUIT

The patent in suit relates to a quick release skewer for bicycles. This quick release skewer is characterized in that the lever is arranged to be movable in the axial direction. As a result, the lever is movable against the pretension of a pretension spring from an engaged position to a rotated position. In the engaged position, the rotary lever transmits a clamping force. In the rotational position, on the other hand, the angular setting of the lever can be adjusted independently of the tension state of the quick release skewer.

The patent in suit is thus distinct from the cited prior art. Known were quick release systems in which the clamping force was applied by turning over an eccentric. However, the disadvantage of this system was that the clamping length first had to be adjusted with the clamping nut. Since the clamping force could only be checked by turning over the eccentric, it normally took several attempts until the user had found and set the suitable clamping length Abs. und ).[0003]and [0004] (cf. para. [0011]). In addition, the eccentric had to be loosened in order to change the position of the lever (cf. para. [0011]). [0011]).

The patent in suit has therefore set itself the task of providing a quick release skewer for bicycles which is easier to operate (cf. para. [0005]). Abs. [0005]). The advantage of the invention is that, on the one hand, the quick release skewer can be easily operated in that the clamping force of the quick release skewer is determined by the clamping piece and thus the lever, without the need to set a pretension. Secondly, the angular position of the lever can be freely selected, independently of the tension (cf. para. [0010]). [0010]).

2. PRIOR ART

The plaintiff countered the novelty of the patent in suit with several publications (K4, K5, K5a and K9). These have in common that they show clamping devices with a lever, but not a use for fastening a wheel to a bicycle, although the clamping devices would in principle be suitable for this. Moreover, the functional principle shown in the prior art has been known for several decades.

The documents K6 and K8 were discussed as the closest prior art for assessing the inventive step. In both cases, quick release skewers are disclosed which also do not have an eccentric but are tensioned via the lever without having to set a pretension beforehand. The K6 differs from the K8 in that the latter has a lever which is removable. This has the advantage that the wheels are better protected against theft. The K8’s lever, on the other hand, was fixed, with the disadvantage that it could have an unfavourable end position. The K6 and K8 thus do not disclose the clamping lever in question.

However, the design of the clamping lever according to the patent in suit had already been known for decades, in particular for machine tools. In combination, the known quick release skewer and the clamping levers known from other fields disclose all the features of the patent in suit.

3. DECISION FEDERAL COURT OF JUSTICE

The Federal Court of Justice decided in agreement with the Federal Patent Court that the patent in suit is novel and inventive compared to the claimed combinations.

The patent in suit is novel because the claims do not directly and unambiguously disclose a use of the clamping devices for wheels of bicycles. Moreover, the patent in suit was inventive over the closest prior art (K6 and k8). Against the background that, on the one hand, the functional principle of the clamping lever in other fields and, on the other hand, the device of the quick release skewer had already been known for decades, there was a need for an additional suggestion for the skilled person to use the clamping lever in connection with quick release skewer.

In its reasoning, the Federal Court of Justice further stated that there was already no reason for the skilled person to further develop the K6 in the direction of the patent in suit, because the lever was removable in the K6, so that the problems to be solved did not exist. On the basis of the K8, the skilled person also had no incentive to use the clamping lever as a solution.

4. SUBSUMPTION

The decision is convincing both in its result and in its reasoning. It is in line with the previous case law on inventive step.

The special feature in the present case was that the functional principle had been known for several decades, but had not been used in the devices, which had also been known for several decades.

The Federal Court of Justice correctly decided that the fact that the known functional principle was not transferred to the devices according to the patent in suit meant that the skilled person needed an additional suggestion from the prior art in order to use the known functional principle in the known device. The reasoning is in line with the case law of the Federal Court of Justice that it must be determined according to the individual case to what extent and with what concretion the skilled person needs suggestions in the prior art in order to further develop a known solution in a certain way(Federal Court of Justice GRUR 2014, 647, para. 25 – Farbversorgungssystem;Federal Court of JusticeGRUR 2017, 498 – gestricktes Schuhoberteil).

This does not mean, however, that due to the long standstill in the prior art the invention cannot have been obvious. Rather, the standstill in the prior art merely means that the factual proximity to the teaching according to the invention alone is not sufficient to negate the inventive step, but that the skilled person needed an additional suggestion to the teaching according to the invention. This already follows from the principle that the age of a citation is only one of several criteria (Federal Court of Justice GRUR 2017, 498, para. 29 – Gestricktes Schuhoberteil).

5) PRACTICAL ADVICE

This decision shows once again that it is advisable for an invalidity plaintiff to provide as much information as possible on the suggestion of further development of a technology. A standstill in the prior art should regularly lead to the fact that a further inducement for the skilled person was required and the mere proximity between the closest prior art and the patent in suit should not be sufficient in such cases. In individual cases, it may also be helpful to explain a possible standstill in the prior art with other (non-technical) motivations, provided there were reasons for this.

Carsten Plaga

#GemEinsameSpitze: As a member of the Big Band of Clara Schumann Music School Christof Augenstein wins the 10th German Orchestra Competition 2021

The jury also awarded the Big Band a special prize for the outstanding interpretation of contemporary Beethoven interpretations. Due to the pandemic, the 10th German Orchestra Competition (DOW) took place this year under the slogan “#VirtuellVirtuos”, for the most part digitally throughout Germany.

During a period of five months, a total of 55 orchestras in 15 categories and with an impressive size of around 3000 musicians took part in the competition supported by the German Music Council. All formations from the 15 categories – including chamber, symphony, accordion and wind orchestras, youth orchestras, wind and guitar ensembles, plucked string orchestras and big bands – had to qualify for the start at the state level beforehand.

What usually takes place by live performance for the jury work, this year had to be elaborately accompanied by mobile filming teams. From June to the end of October, video recordings were made on site at the orchestras. Finally, in december, a jury made the assessments for all categories. The results were announced on december 15, 2021 via Livestram on Youtube.

In addition, special prizes were awarded for the outstanding interpretation of a contemporary Beethoven composition. For the compulsory work, composition commissions with a reference to Beethoven’s music were awarded in each category.

We are very pleased that our partner Christof Augenstein, as a member of the Big Band of the Clara-Schumann Music School Düsseldorf and under the direction of Romano Schubert, not only won Bundesorchesterwettbewerb für Big Bands selbst gewonnen, sondern auch den Sonderpreis für die hervorragende Interpretation der zeitgenössischen Beethoven-Auftragskomposition „A Birthday Song for Ludwig van“ von Mike Herting, erhalten hat.

Dear Christof, congratulations on this special award!

The complete announcement of the results by Prof. Dieter Kreidler, chairman of the orchestra’s advisory board and member of the jury, is available in the video here (“time code, 20:30”).

A video of the musical interpretation and performance of the winning orchestra in category E, Big Band is available here.

The German Orchestra Competition:
The German Orchestra Competition is the central promotional measure of the German Music Council for orchestral music in Germany and is aimed at amateur orchestras of various instrumentations and ages. The comparison of performances and the encounter of the orchestras give the musicians the opportunity to present their musical skills and their artistic expressiveness. The German Orchestra Competition is organised every four years by the German Music Council. It is financially supported by the Federal Government Commissioner for Culture and the Media.

Making music together is one of the most popular forms of cultural leisure activity and civic engagement. More than four million people make music and sing in their free time in Germany’s orchestras and choirs.

Neue Buchveröffentlichung: Geistiges Eigentum als komplexes Anpassungssystem – die Rolle von IP in der Innovationsgesellschaft

We start new year with a hint to a new book publication on “Intellectual Property as a Complex Adaptation System – the Role of IP in the Innovation Society”. In a 19-page book report, our partner Dr Christof Augenstein is part of the publication and gives an overview in chapter 3 about technology protection and the enforcement of patents in Europe, today and in the future.

The paper emphasizes the importance of patent protection of technical inventions compared to protection by trade secrets only. Patent protection also requires a system of enforcement that suits the needs of its users. After outlining the status quo, the paper summarizes the structure of the future Unified Patent Court. It will further discuss whether patent litigation will be more remote from the place of business and whether litigation will be more expansive and burdensome as compared to the current situation.

“Intellectual Property as a Complex Adaptive System – the role of IP in the innovation society” expands the book series under the patronage of the European Intellectual Property Institutes Network (EIPIN) with another incisive work.

It discusses recent innovation trends and focuses on how different forms of intellectual property law can support these trends. Inventors and entrepreneurs are guided through the life cycle of IP-intensive assets that commercialise human creativity. Using a range of sector-specific, interdisciplinary and actor-oriented approaches, each contribution offers suggestions on how to enhance Europe’s capacity to foster innovation-based, sustainable economic growth on a global scale.

Die insgesamt 232 Seiten umfassende Buchveröffentlichung wurde von Anselm Kamperman Sanders, Professor für Recht des geistigen Eigentums, Fachbereich Internationales und Europäisches Recht, und Anke Moerland, Professorin für Recht des geistigen Eigentums, Fachbereich Internationales und Europäisches Recht, Universität Maastricht, Niederlande am 7. Dezember 2021 herausgegeben.The book publication, 232 pages in total, was edited by Anselm Kamperman Sanders, Professor of Intellectual Property Law, Department of International and European Law, and Anke Moerland, Professor of Intellectual Property Law, Department of International and European Law, Maastricht University, The Netherlands on 7 December 2021. You can get a first insight here.

The Legal 500 Germany 2022 – Great honour for Kather Augenstein

The Legal 500 has been published since 35 years and has established itself as one of the most important legal handbooks in Europe and worldwide. Law firms and lawyers who stand out within their field of law and are among the best in their field are distinguished and recommended.

In this year’s Germany ranking, “The Legal 500” highlighted Kather Augenstein several times in the area of “Patent Litigation” and repeatedly confirmed it in Tier 2. We are very pleased about the excellent result and the high recognition our law firm has received for years.

Die Redaktion zählt Kather Augenstein „zu den größten Patentrechtsteams unter den deutschen IP-Boutiquen“, welches „seit Jahren einige der umfangreichsten Verfahren in Deutschland“ in „einem breiten Spektrum von Sektoren“ betreut. In addition to Managing Partner Miriam Kiefer LL.M, Legal 500 lists all of our firm’s partners in its editorial section as Recommended Lawyers or in the Leading Names category.

This year, we are particularly delighted that our Senior Partner Dr Peter Kather has been promoted to the Hall of Fame category and our Partner Christopher Weber to the Leading Names category. Market participants say about us: “Peter Kather stands out due to his great experience and calm negotiation skills” . Christoper Weber has a “fantastic technical knowledge, which he combines with a sense of humor”, he is further confirmed several times for his “effective and very efficient way of working and his very quick technical grasp“.

“We are also pleased about the positive recommendations from our founding partners: Dr Christof Augenstein “is very client-oriented and proactive. He has a comprehensive overview of both legal and technical aspects, even in complex cases.” Miriam Kiefer “is an excellent lawyer who is highly recommended in technical-legal complex patent cases.”

Miriam Kiefer “is an excellent lawyer who is highly recommended in technical-legal complex patent cases.”

The full ranking for Germany is now online and can be viewed here.

COVID-19: Why we don’t need to suspend patents on vaccines

Nationally and internationally, there are instruments to make necessary technologies legally available, such as compulsory licensing. Suspending patent protection does not increase the availability of vaccines.

By now, it is safe to say that everyone in Germany who wants to is vaccinated against COVID19. The German vaccination rate is far above the world average. Especially developing and newly industrialized countries can only dream of such figures at present.

Because of this inequality, calls for a loosening, even a suspension of patent protection for these vaccines are becoming increasingly louder. Not least the American President Joe Biden announced that in the face of this “human catastrophe” a temporary suspend of vaccine patents had to be effected. India and South Africa have already called for the suspension of the TRIPS agreement for COVID-19 vaccines. This would imply that patent protection would be eliminated worldwide and, moreover, no royalties would have to be paid. The discussion seemed to be over. Former German Chancellor Dr Angela Merkel had once again articulated her adverse position in her last government statement on 24.06.2021. She explicitly confirmed that she considered a politically obtained suspension of patents to be the wrong way to go. Production had to be increased on the basis of licences. The Chancellor argued that the world will continue to depend on vaccines being developed in the future. This could only succeed if the protection of intellectual property was not suspended.

At the same time, the pressure seems to have decreased now that the European Union, together with the vaccine manufacturers, has made extensive commitments for the supply of vaccine. However, voices keep flaring up that want to suspend patents in order to supposedly make the vaccine more globally available as a result. Most recently, for example, prominent speakers of the Party Die Linke demanded during the discussion of compulsory vaccination in the German Bundestag, to suspend patents on vaccines. You can see the current demand of the Party Die Linke here.

The will behind these demands to give everyone access to vaccines is essential and must be a matter of course. To achieve this, however, the right – or at least an effective – way must be chosen. In the process, we must also take a look into the future. Patents ultimately also serve to encourage research and innovation. With a view to future pandemics, this innovative power could be constrained in a very decisive way if we now shake the confidence of companies and investors in their intellectual property.

It is highly uncertain whether suspending patent protection can achieve the desired goal at all. Can the shortage of vaccine doses be solved by putting the recipe for a vaccine into the hands of companies all over the world? Have we not seen, even in the small circle of current vaccine manufacturers, that it is not technical know-how that prevents mass production? The problem is the lack of production space, material and skilled personnel. Not every company can produce a vaccine from one day to the next if it only has the recipe in its hands. It can take several months to set up a single plant. Moreover, a patent specification does not contain all the know-how that is actually required to manufacture the product. If one wants to go so far as to also suspend the protection of know-how, one would have to ask oneself how one actually intends to get hold of this knowledge. Against this background, it is doubtful whether the suspension of patent protection could have any effect at all on the current pandemic.

Suspending patent protection is therefore not a solution. This would massively interfere with the rights of the companies and at the same time cannot increase availability (one may also imagine what the future reaction of the companies would be: no research or no publication of the research results and thus no access to knowledge at all).

Moreover, it is astonishing how quickly intellectual property is devalued. If we talk about the vaccine doses themselves and not about the technology behind them, the discussion comes to an abrupt end. It is unanimously agreed that vaccine doses donated by, for example, the USA to other countries have been paid for beforehand. So far, there have been no calls to force the vaccine manufacturers to give away the vaccine doses free of charge. Similarly, there have been no efforts so far to raid the warehouses of, for example, BioNTech, Pfizer or Moderna. As soon as the knowledge is embodied in a vial, it is “real property”. However, we have decided to protect not only property in rem, but also intellectual property.

German law even provides for the possibility of partially suspending patent protection. The Infection Protection Act grants the possibility of accessing the legal property of vaccine manufacturers. Section 13 of the German Patent Act grants the federal government the possibility to partially suspend the absolute patent protection by order. In concrete terms, this means that it could loosen patent protection to the extent that the patented technology – i.e. the construction manual of the COVID-19 vaccine – can be used by the federal government itself or by third parties (including vaccine-producing private companies) without the consent of the rightholders. The decisive factor here, however, is that according to Section 13 para. 3 German Patent Act, there is a claim to appropriate remuneration against the federal government.

In addition to the voices that want to suspend patent protection, the number of voices calling for the granting of compulsory licences is growing.

The German legislator has already provided for this possibility in Section 24 German Patent Act. According to this, private companies have the possibility to make commercial use of the patented invention within the framework of a non-exclusive right of use. A prerequisite for the grant of a compulsory licence is first of all that licence seekers have made unsuccessful efforts within a reasonable period of time to obtain the consent of the patent owner for commercial use. Furthermore, the grant of a compulsory licence must also be in the public interest.

With regard to medical aspects, the Federal Court of Justice found in a decision in 2017 that such a public interest exists in the distribution of an HIV drug (BGH, 11.07.2017 – X ZB 2/17).

If a compulsory licence is granted, the court will limit the scope and duration to a level that does justice to the existing public interest. In addition, the patent owners are entitled to an appropriate remuneration.

German patent law thus already provides all the necessary instruments to impact on intellectual property in the case of public interest. The decisive difference to the efforts of India, South Africa and the USA is that the patent holders are entitled to appropriate compensation. It is obvious that the vaccines against COVID-19 are goods that must be accessible to all people for the benefit of humanity. This makes it all the more important now, also for the future, to find a way to reconcile the interests of the parties involved. It must continue to be lucrative for companies to invest in the development of medicines and vaccines. At the same time, the corresponding research results must be accessible to everyone.

Suspeding patent protection does not solve the problem of the unequal distribution of vaccines around the world. In the end, this proposal is also not really based on the will to increase the availability of vaccines. The idea behind it is rather to save any licence fees.

Dr Christof Augenstein

Dr Katharina Brandt

Düsseldorf Higher Regional Court rejects request for an Anti-Anti-Suit Injunction (AASI) as inadmissible in an individual decision, but confirms its applicability in principle

Even if the decision at first glance seems to diminish the rights of patent owners, the Düsseldorf Higher Regional Court makes it absolutely clear that so-called anti-suit injunctions are to be disapproved and that one can also defend oneself against them before the Düsseldorf Courts. The difference to the case law of the Munich Courts essentially concerns the question, to which degree of probability it has to be expected that a license seeker will actually seek an anti-suit injunction before a foreign Court. Likewise, the Higher Regional Court Düsseldorf confirms that anyone seeking an anti-suit injunction in a foreign jurisdiction is to be regarded as unwilling licensee, so that the Court would issue a request for injunction relief and a request for recall resulting from a standard-essential patent without further discussion whether the FRAND offer is appropriate.

In a judgment dated on 7 February 2022, (Case No. I-2 U 27/21), the Second Civil Senate of the Düsseldorf Higher Regional Court has set aside a preliminary injunction (hereinafter: AASI) issued by the Düsseldorf Regional Court on 14 December 2020 (Case No. : 4c O 73/20). The decision is the second decision of a Higher Regional Court on AASI in Germany issued in regard to disputes on standard-essential patents (hereinafter: SEP). In contrast to previous decisions on AASI, this is the first time that a Court has rejected a request for issuing an AASI as inadmissible based on the grounds of the specific individual case.

You can access the decision of the Düsseldorf Higher Regional Court in German here and in English here.

In its decision, the Second Civil Senate of the Düsseldorf Higher Regional Court expressly emphasized that engaging in an ASI proceeding is an encroachment on rights of patent owners protected in absolute and constitutional terms. Legal protection against such an encroachment can be obtained before German Courts.

The Second Civil Senate of the Düsseldorf Higher Regional Court reasoned that, for constitutional reasons, there was in principle a need for legal protection in SEP disputes to issue an AASI. However, this only applies to the extent that the issuance of an AASI is objectively necessary to ensure effective legal protection.

It was decisive that – in contrast to previous decisions of Munich Courts – neither an action on the merits was pending nor a request to issue an ASI had been filed. In the individual case, the Dusseldorf Higher Regional Court therefore denied that it is objectively necessary to issue an AASI.

Contrary to the case law of the Munich Courts, the Düsseldorf Higher Regional Court did not consider it to be sufficient that the users of the SEP had not made a binding declaration that they did not wish to request for an ASI in a foreign jurisdiction.

A ”subsequent protection order“ was to be sufficient for the protection of the patentees; in contrast, an ”anticipatory“ AASI did not offer better protection. In the absence of substantial indications, an AASI cannot be issued merely because there was an abstract possibility of an ASI request, due to the rule of law.

The Second Civil Senate emphasized that the subsequent legal protection was also acceptable because patent users by filing a request for an ASI showed that they are obviously unwilling licensees. They should therefore be ordered to cease and desist without further ado.

The Dusseldorf Higher Regional Court also recognized that the threats of sanctions by foreign Courts may deter patent owners from enforcing their rights for economic reasons and that, from their perspective, legal protection is inadequate. However, this was a general consequence of the practice of foreign Courts and is independent of the date on which the AASI was issued.

The Dusseldorf Higher Regional Court ruled that there was no need for legal protection even if an affiliated company had already requested for an ASI in the past, insofar as the facts of the case differed in material respects – e.g. pending proceedings on the merits abroad.

Finally, the Second Civil Senate made an obiter dictum on the wording of the request: It could be left open whether the request was inadmissible for this reason.

Conclusion

It is gratifying that the Second Civil Senate of the Düsseldorf Higher Regional Court in principle has endorsed the view of the Munich case law and confirmed that patent holders can obtain protection for their IP Rights against ASI before national Courts. SEP owners can therefore in principle continue to obtain effective legal protection against ASI before Düsseldorf Courts. The differences in the dogmatic approach are unlikely to have an impact in practice.

However, the Second Civil Senate of the Düsseldorf Higher Regional Court rules on stricter standards compared to the Munich case law. In doing so, the Dusseldorf Higher Regional does not apply all the “categories” developed by the Regional Court Munich. According to the decision of the Düsseldorf Higher Regional Court, in particular the following categories do not entitle to issue an AASI without further ado:

• Patent users have threatened to file proceedings on the merits for licensing or for a determination of a reasonable global royalty for such license in a jurisdiction that generally provides ASI;
• Patent users have not declared in text form within a short time limit set by the patent proprietor not to file a request for an ASI;
• Patent users have threatened to request an ASI towards other patent owners or have already requested such an ASI, insofar as indications, which are recognizable for the patent owner, are missing that the patent user will not continue this practice in the future, at least in relation to the patent owner;

In the following constellations, requests by SEP holders for AASI are likely to be issued even after the decision of the Düsseldorf Higher Regional Court:

• (Active) threat of patent users towards to patent owners with a request for an ASI;
• Patent users have already filed a request for an ASI against the patent owners;
• Patent users have filed proceedings on the merits for licensing or for determination of a reasonable global royalty for such license in a jurisdiction that generally provides ASI;

Gratifyingly, the Düsseldorf Higher Regional Court recognized that sanctions imposed by foreign Courts may deter patent owners from enforcing their rights for reasons of economic rationality and that, from their perspective, legal protection is inadequate. This shows that German Courts do consider that ASI decisions can exert considerable pressure on companies.

However, the further reasoning that this is not connected with the question of whether action is taken against an ASI anticipatory or subsequently, but is a general consequence of the ruling of Chinese Courts, is not convincing. The reasoning of the Düsseldorf Higher Regional Court is only partially correct in this respect. For patent owners, the point in time at which an AASI decision is issued is very decisive. It may be true that foreign Courts do not sufficiently consider decisions of German Courts in their decisions. However, for the activities of companies abroad, it is factually very decisive whether their own conduct is covered by an AASI. Patent owners who have their own AASI in their hand prior to an ASI to be issued are presented in a different light and can also act differently in negotiations on FRAND terms. In addition, companies are sometimes required by their own compliance rules to abide by rulings of foreign Courts and may not challenge the order of a foreign Court because of this self-binding nature. In our view, the Düsseldorf Higher Regional Court does not take these factual aspects sufficiently into account. We believe that under these circumstances it could be objectively necessary for reasons of effective legal protection to issue an anticipatory AASI. In addition, fines in particular issued by Chinese Courts are significantly higher than in German Courts. Because of this asymmetry of economic pressure, a subsequent legal protection of German Courts remains ineffective.

It should be emphasized that, in addition to the Munich Regional Court (cf. Regional Court Munich I, judgement dated 28 January 2021, case no. 7 O 14276/20 (an English translation is available here)) now also the Düsseldorf Higher Regional Court explicitly recognizes that patent users requesting an ASI are obviously unwilling licensees. It should be obvious that this unwillingness to license cannot be compensated by a later behavior; patent users who request ASI are thus quasi incurably unwilling to license. This is an important and clear signal that requests for an ASI in Germany will have considerable consequences.

We assume that the Patent Senates of the Düsseldorf Higher Regional Court have agreed on such a fundamental and landmark decision and that this decision therefore provides guidance not only for future decisions of the Second Civil Senate, but also for decisions of the XV Civil Senate.

In order to further compensate for the ”inadequacy“ of legal protection, it would also be desirable that Courts cushion sanctions imposed by foreign Courts by means of indemnification claims in the context of AASI decisions. Such claims are likely to arise from Sections 823 and 249 (1) of the German Civil Code and, in our view, can also be asserted in preliminary injunction proceedings. However, German Courts have not yet issued any decisions in this regard.

Dr Christof Augenstein

Dr Benedikt Walesch

Legal All Stars 2021: German Business Magazine WirtschaftsWoche awards Senior Partner Dr Peter Kather as top lawyer in the category Patent Law

Dr. Peter Kather has been awarded 2nd place by German Business Magazine WirtschaftsWoche in its current ranking of “Legal All Stars 2021” in the legal field of patent law, and thus ranks among the top three lawyers in his field in Germany.

“This award for Dr Kather reflects not only his outstanding patent law expertise, but also the high reputation he enjoys not only among clients and competitors, but especially among judges,” says Miriam Kiefer, Managing Partner of Kather Augenstein.

The entire team of Kather Augenstein sincerely congratulates its namesake and senior partner on this special award!

For the second time, the Handelsblatt Research Institute (HRI), in the course of the ranking launched in 2020, surveyed almost 23,000 business lawyers on their most renowned competitors from 25 specialist areas. The survey resulted in a list that was evaluated by a jury of experts consisting of in-house lawyers, professors, litigation financiers and consultants, so that a ranking with a total of 75 lawyers from 52 law firms could be compiled and finally three “Legal All Stars” emerged from each legal field.

The ranking of the Legal All Stars was published in the 18 february 2022 issue of WirtschaftsWoche. The complete overview of all Legal All Stars 2021 by legal area can be found here.

HRC Dusseldorf, Judgment of 18.02.2021 – 2U 33/20: Extension and concentration of actions on appeal

The Second Senate of the Higher Regional Court Düsseldorf had to deal with the question under which conditions an action can be extended to include further IP rights in appeal proceedings. In doing so, the Senate primarily included Section 145 PatG in the question of whether an extension to further patents in suit is expedient in the sense of Section 533 ZPO (Code of Civil Procedure) or not.

I. FACTS

The plaintiff at first instance asserted the infringement of claims of the patent in suit (hereinafter “patent in suit A”) relating to “securing access to multimedia content by authenticated distance measurement”. The attacked device was a streaming adapter offered and distributed in Germany, which is used to transmit video content to a television via an HDMI input, whereby the HDMI standard allows the so-called HDCP technology as copy protection.

The method claim of the patent in suit A asserted at first instance provides, inter alia, that “a distance measurement between a first and a second communication device is to be performed and it is to be checked whether the measured distance is within a predefined distance interval”. The patent in suit A further provides that “the first and second communication devices share a common secret and said common secret is used”.

The Regional Court dismissed the action at first instance. The plaintiff appealed and extended the action to include a further patent in suit (hereinafter “patent in suit B”) which provides, inter alia, that “a distance measurement is carried out between the first and second communication devices“. Furthermore, it provides that the secret shared by the first and second communication devices is already shared before the distance measurement is carried out, whereby the patent in suit B defines the sharing of the secret in more detail by further features. Both patents belong to the same patent family.

II. REASONS

The HRC Düsseldorf dismissed the extension of the action at second instance as inadmissible. In the reasons for its decision, however, the HRC did not only deal with the case at hand, but above all made general considerations as to the conditions under which an extension of the action to include a further patent in the appeal proceedings may or may not be expedient.

Whether the extension of the action is admissible in the appeal proceedings depends on § 533 ZPO (Code of Civil Procedure). The extension of the action must be expedient if the opponent does not consent to it. It is expedient if it is procedurally economical. The question is therefore whether the extension of the action prevents another legal dispute. However, it has to be taken into account that every plaintiff already expressed his or her will to enforce the claim by merely extending the action. Therefore, further litigation is nearly always prevented by an extension of the action. Prevention is therefore not a suitable criteria for determining the if an extension of the action is expedient in similar cases.

Therefore, the expediency is to be assessed according to whether the previous subject matter of the proceedings is usable for the assessment of the new motions (i.e. based on the newly introduced patent in suit) or not. If so, the extension of the action is expedient. If, however, the previous subject-matter of the proceedings is not usable in relation to the new motions, the extension would be inadmissible in principle.

If the action is extended to a further IP right, the previous subject-matter of the proceedings is generally not usable and the extension of the action is therefore inadmissible. This is because each IP right must always be interpreted on its own merits, even if the descriptions of the IP rights are partly identical. If necessary, further findings of facts were required, e.g. in the case of new or deviating claim features. This applied all the more if the prospects of success of an appeal against the grant of the further patent in suit or the protectability of a newly introduced IP right had to be examined and the prior art is also unknown till then.

The case could be different, however, if the plaintiff is forced by Sec. 145 Patent Act to assert the other IP rights in the same infringement dispute. In view of the vagueness of the requirements of Sec. 145 Patent Act (“the same or similar act”), it is sufficient if the plaintiff has to reckon with the serious possibility that Sec. 145 Patent Act would be held against him. However, this is contradicted by the interpretation of § 533 (2) ZPO (Code of Cicvil Procedure). The purpose of the appeal is to check and correct errors, but not to expand the facts.

The HRC Düsseldorf therefore is of the opiniion that an extension of the action is in any case expedient if the plaintiff, through no fault of his own, runs the risk of incorrectly assessing the requirements of Section 145 Patent Act. It is not its fault if the IP right could not yet be asserted in the first instance, e.g. because the IP right was not granted or the plaintiff was not entitled to sue.

However, the plaintiff caused the situation himself as soon as he was able to assert the IP rights at first instance, but did not due to procedural reasons. In addition, a number of disadvantages of the defendant must be taken into account, such as the lack of a factual instance, the late initiation of nullity proceedings or the possibility of the plaintiff to enforce the appeal judgement without providing security. In such a case, a careful examination of the individual case is required.

Thus, an extension is expedient if there are no substantial differences between the IP right asserted in the first instance and the IP right asserted only in the appeal instance, so that the previous subject-matter of the proceedings can be adopted. The case is similar if the infringement of new features is undisputed or if the realisation of these new features can be established on the basis of the findings of facts of the Regional Court.

In contrast, the extension of the action is not expedient if new findings of facts are necessary and/or a new comprehensive interpretation is required. The HRC Düsseldorf also assumed the latter in the present case. While patent in suit A provides for a specific distance measurement, patent in suit B only required an undefined distance measurement. In addition, patent in suit B provides that the “secret” between the first and second communication device has to be carried out before the distance measurement. This required a new definition of the scope of protection and thus also a new analysis of infringement.

III. CONCLUSION

Although the HRC Dusseldorf’s statements are comprehensible, the ruling does not seem to be consistent in the result.

On the one hand, the HRC emphasizes that an extension of the action is expedient if the realization of newly added or differently formulated features can already be assessed on the basis of the findings of facts made by the Regional Court.

On the other hand, however, it dismissed the extension of the action in the present case as inadmissible because a comprehensive redefinition of the scope of protection of the patent in suit B is required and many of the questions arising in determining the scope of protection of the new patent in suit B have to be examined for the first time in the appeal proceedings. However, this is a pure question of law. Once this legal question has been clarified, the HRC would be in a position to assess whether the realization of the newly added or differently formulated features can be assessed on the basis of the findings of facts made by the Regional Court. Whether this was the case in the present case cannot be inferred from the reasons for the judgement.

As a result, the patentee is advised to assert all comparable patents from its portfolio (in particular patents from the same family) at first instance and not to wait until the appeal for reasons of procedural economy. As the case at hand shows, such a presumably procedurally economical approach can be uneconomical for the patent proprietor in the end.

News: Administrative Committee of Unified Patent Court established

Alexander Ramsay (SE) is appointed Chairman of the Administrative Committee of the Unified Patent Court, Johannes Karcher (DE) is appointed Vice-Chairman After Austria became the 13th member state to deposit its ratification for the Protocol on the Provisional Application of the Agreement on a Unified Patent Court (UPC) on 18 January 2022, the Protocol (PPA) on 19 January 2022 took effect.

The Preparatory Committee for the establishment of the EPC subsequently started the preparatory phase. The day before yesterday, 22 February 2022, a historic step on the way to the Unified Patent Court was taken with the inaugural meeting of the Administrative Committee of the Court in Luxembourg, the seat of the Court of Appeal.

The first steps were the adoption of the Rules of Procedure of the Committee, the Rules for European Patent Jurisdiction (Rules of Procedure), the Rules on Appropriate Qualification (Litigation Certificate), the Service and Staff Regulations of the Court and the Financial Regulations.

The Contracting States elected Mr Alexander Ramsay (SE) as Chairman of the Committee and Mr Johannes Karcher (DE) as Vice-Chairman.

A preparatory phase of at least eight months is assumed for the appointment of approximately 90 judges and also the other staff of the court. Interviews with first candidates for judges for the court are expected to be held at end of march 2022. The interviews will be conducted by the Advisory Committee, whose members have also been appointed by the Administrative Committee.

“With the Administrative Committee, the Unified Patent Court becomes able to act. This is another essential step for the court to start its work,” says Dr Christof Augenstein. “Companies and especially patent owners should now start to deal with the new rules.”