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UPC’s Court of Appeal Holds That the UPC Can Determine Damages for a Previous National Infringement In a recent order in case UPC_CoA_30/2024, the UPC’s Court of Appeal ruled that the UPC is competent to decide on an action for determination of damages where a national court has established infringement of a European patent, thus overturning the order of the Court of First Instance (Hamburg Local Division). The Court of Appeal also provided helpful clarification regarding its jurisdiction... Read more
UPC Delays Due to Difficulties in Serving Proceedings Under the Hague Service Convention Summary Serving proceedings out of the jurisdiction in which they have been issued can be a time-consuming exercise. Two recent decisions of the UPC’s Munich Local Division concerning service of applications for preliminary measures in related cases between Air Up Group GmbH (the German Applicant) and Guangzhou Aiyun Yanwu Technology Co., Ltd (the Chinese Defendant) illustrate the nature and extent... Read more
A First Substantive Decision of the UPC Court of Appeal – 10x Genomics vs Nanostring In a recent decision in case UPC_CoA_335/2023, the UPC’s Court of Appeal overturned a preliminary injunction granted by the Court of First Instance (Munich Local Division) to 10x Genomics, Inc. against Nanostring Technologies based on EP 4108782. As previously reported, the Munich Local Division held at first instance that there was a sufficient degree of certainty that the asserted patent... Read more
Measures Being Taken by EPO, EUIPO, WIPO and UK IPO in Relation to COVID-19 Pandemic The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO) and the International Bureau (IB) of WIPO all remain operational and will allocate filing dates for newly filed cases and accept other submissions/fee payments as normal. However, a number of measures have been adopted by the offices to assist applicants in view... Read more
EPO Extends Mandatory Video Conference for Opposition Division Oral Proceedings until 31 January 2022 The EPO has announced that it is extending the use of video conference for opposition division oral proceedings until 31 January 2022. The current measures, whereby all opposition division oral proceedings take place by video conference, were due to expire on 15 September 2021. We understand that this announcement means that no opposition division oral proceedings will take place in-person... Read more
Restrictive Preliminary Injunction Practice in Germany Challenged Following Referral to CJEU Over the last few years certain Regional Courts in Germany have refused to grant preliminary injunctions to patentees unless the patent has been held valid in opposition proceedings at the European Patent Office (EPO), or in nullity proceedings before the German Federal Patent Court. This contrasts with practice elsewhere in Europe, including in the UK, where a preliminary injunction can... Read more
German Federal Council Passes Bill for Re-ratification of UPCA Today the Federal Council (Bundesrat) unanimously passed the bill required for German ratification of the Unified Patent Court Agreement (UPCA) thereby achieving the two-thirds majority of the members mandated by the Federal Constitutional Court (FCC). The bill must now be signed by the German Government and the Federal President before UPCA and Protocol on Provisional Application (PPA) ratification can be... Read more
Update on the UK Medicines Regulator Post Brexit The UK’s Medicines and Healthcare products Regulatory Agency (MHRA) has joined the Australia-Canada-Singapore-Switzerland (ACSS) Consortium, with effect from 1 January 2021. The group will be renamed as the Access Consortium to reflect the addition of the UK, which increases the combined population of the participating countries to approximately 145 million. Pharmaceutical companies that submit applications to some or all of... Read more
Actavis Strikes Again: Edwards Lifesciences Find Success in Second High Court Heart Valve Case of 2020 For the High Court of England and Wales, Mr Justice Birss judged that Meril’s Navigator device, a catheter based delivery system for their MyVal transcatheter heart valve, infringed an Edwards Lifesciences patent covering their SAPIEN valve, under the doctrine of equivalents. The decision provides further guidance on the application of Actavis vs Lilly and is another example of its positive... Read more
EPO Announces Pilot Project for Holding Opposition Division Oral Proceedings via Videoconference The President of the EPO issued a decision on 14 April 2020 concerning a pilot project to hold oral proceedings before opposition divisions via videoconference. A notice was also issued, which provides additional information regarding oral proceedings held by videoconference. Although the EPO has offered the possibility of oral proceedings before examining divisions via videoconference since 1998, and has recently... Read more
EPO Announces that Examining Division Oral Proceedings will be via Videoconference The President of the EPO issued a decisionon 1 April 2020 concerning oral proceedings before examining divisions. A noticewas also issued, which provides additional information regarding oral proceedings held by videoconference. According to the President’s decision, oral proceedings before examining divisions will take place by videoconference, unless there are serious reasons for the oral proceedings to take place on the... Read more
Latvia Becomes the Fifteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 11 January 2018, Latvia became the fifteenth country to deposit its ratification of the UPC Agreement with the EU Council’s General Secretariat. The full list of countries which have deposited their ratification of the UPC Agreement is now as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden. The UPC Agreement... Read more
Lithuania Becomes the Fourteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 24 August 2017, Lithuania became the fourteenth country to deposit its ratification of the UPC Agreement with the EU Council. The full list of countries which have deposited their ratification of the UPC Agreement is now as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, France, Italy, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and Finland. The status of the UPC Agreement... Read more
Unwired Planet v Huawei – Mr Justice Birss Grants First FRAND Injunction, and Publishes Terms of FRAND Licence We reported on 12 May 2017 that Mr Justice Birss had given an important decision concerning FRAND undertakings. On 7 June 2017, Mr Justice Birss gave a follow-up decision dealing mainly with the FRAND licence agreed between the parties and the decision as to whether to grant Unwired Planet an injunction to restrain patent infringement by Huawei, along with some... Read more
Bloomberg World Intellectual Property Report – How to Use Experimental Evidence in English Patent Litigation An article written by J A Kemp partnerTom Carverentitled ‘How to Use Experimental Evidence in EnglishPatent Litigation’has been featured in Bloomberg BNA’s July issue. The article looks in detail at the valuable role that experimental evidence can play in patent litigation, exploring procedure, minimisation of risk, dealing with the other side’s experiments and other jurisdictions. Read more
Finland Becomes the Ninth State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. Finland became the ninth state (after Austria, France, Sweden, Belgium, Denmark, Malta, Luxembourg and Portugal) to ratify the agreement on 19 January 2016 (see here). The UPC preparatory committee is aiming to complete its work on... Read more
The UK Government Takes Another Step Towards Ratification of the Unified Patent Court (UPC) Agreement The UK Government has concluded its consultation on the secondary legislation implementing the Agreement on a Unified Patent Court (UPC) and EU Regulations establishing the European Patent with Unitary Effect (EPUE). The UK Intellectual Property Office (UK IPO) ran a technical review and call for evidence between 10 June 2014 and 2 September 2014 on draft secondary legislation which proposed... Read more
The Member States Participating in the European Patent with Unitary Effect (EPUE) Agree the Distribution of Revenue from EPUE Renewal Fees We reported in June 2015 that the Select Committee of the Administrative Council of the European Patent Office (EPO) endorsed the so-called True Top 4 proposal tabled by the EPO on renewal fees applicable to the European Patent with Unitary Effect (EPUE) (see here). This essentially means that the renewal fees for the EPUE will be the equivalent to the... Read more
Portugal Becomes the Eighth State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The agreement on the UPC was signed on 19 February 2013 by all of the EU’s member states, except Croatia, Poland and Spain. Portugal became the eighth state (after Austria, France, Sweden, Belgium, Denmark, Malta and Luxembourg) to ratify the agreement on 28 August 2015 (see here). The agreement will not enter into force until the three biggest validation states,... Read more
The London Section of the Central Division and the UK ‘s Local Division of the Unified Patent Court (UPC) will be located in the Aldgate Tower It was announced yesterday that the UK Intellectual Property Office (UKIPO) has signed a lease for space in the Aldgate Tower for the London section of the Central Division and the UK ‘s Local Division of the UPC (see here). This location is particularly convenient for J A Kemp ‘s patent attorneys representing clients before the UPC. Read more
Luxembourg Becomes the Seventh State to Ratify the Agreement on the European Union’s (EU ‘s) Unitary Patent Court (UPC) The agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. Luxembourg became the seventh state (after Austria, France, Sweden, Belgium, Denmark and Malta) to ratify the agreement on 22 May 2015 (see here). The agreement will not enter into force until the three biggest validation states,... Read more
The Italian Ministry of Economic Development Indicates that Participation in the Unitary Patent System is now a Priority for Italy The proposals for a European Patent with Unitary Effect (or Unitary Patent) and associated Unified Patent Court are proceeding under the European Union ‘s (EU ‘s) so-called Enhanced Cooperation procedure by means of which a group of member states can proceed without others. Italy is one of four member states (along with Croatia, Spain and Poland) that are currently not... Read more
The Court of Justice of the European Union (CJEU) Dismisses the Spanish Challenges to the Unitary Patent Spain brought actions before the Court of Justice of the European Union (CJEU) (Cases C-146/13 and C-147/13) against Regulations 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 2012, L 361/1) and 1260/2012 on the applicable translation arrangements. The Court today issued its Decision in connection with both cases. The Court dismisses both of... Read more
Court of Justice of the European Union (CJEU) Rules on the Extent to which Parthenotes Fall within the Patentability Exclusion in Article 6(2)(c) of Directive 98/44/EC (C-364/13) Article 6(2)(c) of the European Union’s Directive 98/44/EC on the Legal Protection of Biotechnological Inventions states that uses of human embryos for industrial or commercial purposes shall be considered unpatentable. This is reflected in Rule 28(c) of the European Patent Convention (EPC) and Section 76A and Schedule A2 of the UK Patents Act 1977 (as amended). Henry Carr QC (sitting... Read more
The Advocate General proposes that the Court of Justice of the European Union (CJEU) dismiss the Spanish challenges to the Unitary Patent Spain has brought actions before the Court of Justice of the European Union (CJEU) (Cases C-146/13 and C-147/13) against Regulations 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 2012, L 361/1) and 1260/2012 on the applicable translation arrangements. The Advocate General, Yves Bot, has today issued his Opinion in connection with both cases.... Read more
The Opinions of the Advocate General on the Spanish Challenges to the Unitary Patent have been Delayed Spain has brought actions before the Court of Justice of the European Union (CJEU) (Cases C-146/13 and C-147/13) against Regulations 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 2012, L 361/1) and 1260/2012 on the applicable translation arrangements. The Opinions of the Advocate General of the CJEU in connection with these two cases... Read more
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