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.”

Global SEP Trends and Future Prospects – Japanese Companies and SEP

The SEP Research Group will hold a closing event next Wednesday, 16 March 2022 from 09:00 to 12:00 (CET) under the leadership of its chairman Mr. Toshi Futamata (Institute of Futures Studies, University of Tokyo) and summarise the activities in 2021 in an open online workshop. Since last year, the research group welcomes a significant increase in participants: up to 200 experts from Japan, the USA, Europe, China, South Korea and India are expected to give presentations on international SEP trends.

For the European region, our partner Dr Christof Augenstein will give a 30-minute presentation on the latest European SEP industry trends in the third part of the workshop (the broadcast is expected to take place around 10:00 to 10:30 CET).

The entire online seminar will be held in English and will be hosted by ZOOM software. For free participation and registration, we will provide a registration link by 14 march at latest. When opening the workshop programme 2022 via Chrome, you can change the language into English by right-clicking. Please also note that the time in the overview refers to Japanese Standard Time (JST).

The event is supported by the Ministry of Economy, Trade and Industry, the Japan Patent Office and the Japan International Association for the Protection of Intellectual Property (AIPPI), Japan.

Chambers Global Guide Rankings 2022: Kather Augenstein awarded in the field of Intellectual Property – Patent Litigation in Germany

In this year’s Chambers Global Guide Rankings 2022, our IP boutique firm was listed in Band 3 in the category of Intellectual Property – Patent Litigation. Three of our partners are highlighted this year:

Dr Peter Kather is listed in Band 1 and is highly regarded for his experience in international infringement proceedings. Clients rave: “He has unparalleled expertise,” says one interviewee: “We very much appreciate his technical knowledge, he is legally excellent.”

Dr Christof Augenstein is listed in Band 4 and clients say Christof Augenstein “is always quick to in making follow-ups for international clients who are not familiar with local law.” He represents clients in complex and often multi-jurisdictional patent disputes, including enforcement and infringement proceedings.

Miriam Kiefer LL.M is listed in Band 5, she enters the rankings backed by impressive market support, being described by sources as “a good and steady litigator who knows her field very well.” Miriam Kiefer handles extensive patent litigation and has a particular focus on life sciences.

For a full overview of Kather Augenstein’s individual rankings in Chambers & Partners, click here.

We sincerely thank our clients and peers for their confidence in us. The rankings show that our team continues to progress in providing first-class services to our clients around the globe. Special congratulations goes to the entire team of Kather Augenstein.

Chambers Research is conducted by 200 reseach analysts in 200 jurisdictions and includes nearly 6,000 rankings. Hundreds of thousands of surveys of companies, most of them in-depth interviews, are collected annually.

EU Commissions call for evidence – A new framework for standard-essential patents

The EU Commission has published a call for evidence for an impact assessment on 14 February 2022. With the public consultation, the Commission seeks views from stakeholders on various SEP-related issues.

The Commission had already announced in its 2020 “Intellectual Property Action Plan” that it would develop proposals to promote transparency and predictability in SEP licensing through a possible reform of the SEP licensing system. Accordingly, a corresponding reform was to be based in particular on the concept developed in the Commissions Communication on “Setting out the EU approach to Standard Essential Patents“ from 2017.

The Commission is now seeking the views of the public and stakeholders. This, together with the case law of the European Court of Justice on the handling of standard-essential patents and various studies, will feed into an impact assessment. On this basis, the Commission intends to prepare a legislative initiative, possibly in combination with non-legislative measures. This is because the Commission wants to work toward recalibrating the EU patent law to strengthen the patent system and promote the EU’s green and digital transformation. In doing so, the Commission is also looking ahead to the upcoming launch of the unitary patent system. According to Art. 20 UPCA, the Unified Patent Court will apply Union law in its entirety and respect its primacy. Accordingly, it will apply any European legislation, whereas efforts at national level will not have any direct effect on unitary patents.

Against this backdrop, the Commission seeks to address a key problem it has identified: inefficient licensing of SEPs, including “hold-up,” “hold-out,” and “forum shopping.” As the Commission puts it, it sees these problems stem from insufficient transparency and predictability, the uncertainty about FRAND terms and conditions, and the high enforcement costs and inefficient enforcement.

The Commission does not formulate any concrete measures. However, from the call for evidence and the corresponding questionnaire for consultation, one can conclude that there are certain focal points. In any case, the Commission seems to want to initiate a regulation. It also sees a clear need for action at EU level. This is especially with regard to licensing and enforcement since measures at the member state level could lead to different interpretations. It therefore wants to achieve the best possible balance of interests at EU level, especially with regard to the unitary patent.

The Commission identifies three main points as concrete policy options:

1. Improvement of transparency

In this regard, it sees the possibility of creating an obligation to disclose and update certain information. Already in 2017, the Commission had called on standardization organizations to ensure that databases provide detailed, up-to-date information on SEPs that is easily accessible to the public. The Action Plan also takes up this point and considers the use of new technology, such as blockchain technology, for this purpose.

In addition, the Commission would like to have the standard essentiality assessed by independent third parties in the future.

2. Initial clarification on various aspects of FRAND

Furthermore, the Commission is considering the development of “guiding principles and/or processes for clarifying the concept of FRAND”, “negotiating FRAND terms and conditions” and “determining appropriate level(s) of licensing in a value chain”. Here, a corresponding reform proposal should be of particular interest. The European Court of Justice was unable to comment on the question submitted by the Dusseldorf Regional Court as to whether a company can raise the abuse objection against SEP holders because they do not license companies in the supply chain. This question of the licensing level is therefore still open today.

3. Improving the effectiveness and efficiency of enforcement.

Finally, the Commission plans to create further incentives for mediation, conciliation, and arbitration. In its 2017 communication, the Commission refers to the planned arbitration and mediation center of the Unified Patent Court. However, the Commission does not indicate what such incentives should look like. Likewise, it is not immediately apparent how this aspect is consistent with the goal of improved transparency.

In any case, things remain exciting around the subject of SEP. According to the EU Commission’s timetable, we can expect the next step as early as the fourth quarter of this year. Based on the impact assessment, the Commission will develop an initiative. It will probably (also) propose new EU law.

Accordingly, all stakeholders should participate in the consultation. Only in this way can the Commission recognize and take into account all points of view. The Commission will thus seek a way to ensure that patent holders are adequately remunerated while at the same time allowing the economy and society to benefit from the technical achievements of our time.

Feedback and consultation period end on 9 May 2022.

Dr Katharina Brandt