BARDEHLE IP Experts

For a deep dive into the Unified Patent Court, please visit our UPC website https://www.bardehle.com/en/upc-special or our newly created UPC blog https://upc.law/.

As we all know, facts win cases. Thus, it is important that the UPC may order the inspection of premises and the preservation of evidence. This possibility also exists under German national law.

If you are interested in a template for your invention disclosure report, please contect Dr. Patrick Heckeler: [https://www.bardehle.com/en/team/heckeler-patrick]

As you know, AI-related inventions are a specific sub-type of computer-implemented inventions. However, they are often much more complex. This is because AI inventions typically comprise lots of aspects, such as an underlying model or classifier, a training method, the use of a trained model, training data, and so forth.

Hence, many more aspects have to be addressed and described in a corresponding invention disclosure report than in reports for common computer-implemented inventions so as to enable your patent attorney to draft a meaningful patent application.

First of all, be aware that AI is a rapidly developing technical domain. Hence, new buzzwords emerge frequently.

You should therefore make sure to explain the meaning of these terms in detail and to use them consistently throughout your invention disclosure report.

Secondly, always clarify which aspects of your invention relate to the training phase and which relate to using a trained model. It might make sense to separate your invention disclosure report into corresponding chapters. Flow charts and UML diagrams are great tools for describing the operation of your invention.

Finally, I suggest including some sample training data with the invention disclosure report, supplemented by a brief description of the content. Ideally, you should also provide some measurement results to show how well your invention operates.

For a deeper dive, read this article in GRUR Patent 2023, 167 (German): https://beck-online.beck.de/?vpath=bibdata%2Fzeits%2FGRURPATENT%2F2023%2Fcont%2FGRURPATENT%2e2023%2e167%2e1%2ehtm

Welcome to this IP Quick Tip on one the first decisions by the UPC, an ex parte preliminary injunction (PI) regarding speed-pedelecs.

On June 22, 2023, the Local Division of Duesseldorf granted a PI in favor of Swiss pedelec manufacturer myStromer based on patent infringement by their Swiss competitor Revolt Zycling at the “EUROBIKE” trade fair in Frankfurt. Earlier on that same day, myStromer had already sent a warning letter to Revolt Zycling and filed their application for provisional measures with the UPC.

The Court issued the PI without hearing the Defendant and even though Revolt Zycling had filed a protective letter with the UPC: According to the reasoning of the decision, the arguments in the protective letter had not convinced the Court.

Here are the three main take-aways from this decision:

First: The UPC may grant PIs very quickly, here in the course of one day, and without hearing the Defendant.

Second: Protective letters are still essential in preventing an ex parte PI – but they must be drafted carefully and comprise convincing arguments.

And third: The UPC will review validity, but a PI does not require a “battle-tested” patent – in the case at hand, it was sufficient that the patent had not been attacked since 2015 and that the Defendants had not raised any invalidity arguments.

To browse the latest decisions rendered by the UPC, please refer to our UPC decisions database.

Hi everyone, welcome to this IP Quick Tip relating to our first experiences at the UPC. It goes without saying that all of this is very exciting and still in its early stages. However, certain trends already seem to be robust. As of mid-October 2023, 84 cases have been filed and BARDEHLE PAGENBERG is representing plaintiffs and defendants alike in 21 of these cases, having an amazing market share of exactly 25%.

Not only were we “first” in filing the initial cases on day 1, we also attended the very first procedural and substantive hearings at the Court of First Instance and the Court of Appeals. Indeed, we even won the very first inter-partes preliminary injunction based on the very first asserted Unitary Patent for our clients 10x Genomics and Harvard University with effect in all 17 member states. So, we do have relevant experiences to share.

Most importantly, the UPC is functioning very well so far – in contrast to the electronic Case Management System – and delivers timely, high-quality decisions.

In our cases, the international panel of judges including technically qualified judges was perfectly prepared and very engaged in the oral hearings. They presented their preliminary opinion in detail and gave clear guidance to the parties as to what to focus on in their oral arguments. In fact, all of the judges asked many questions, thereby drilling down right to the core of the technical questions at issue. They clearly “tested” the parties’ responses for their decision-making process. Given the technical expertise on the bench, this means that parties are well-advised not to provide evasive answers, but to explain their positions in an expedient and convincing way, and to avoid bogus arguments impairing credibility.

As oral hearings are audio recorded, it is further advisable to diligently prepare and train for the oral arguments and to think on your feet. Using mock trials and US-style court reporters has proven to be helpful in that regard.

Interestingly and contrary to some expectations, there are no judges dominating other judges on their “home turf”. The panels we experienced functioned like a sports team. One could tell that the judges really consider themselves a united team for a Unified Court and that they “think UPC” by not shying away from adapting or improving national and EPO case law as they see fit. These highly motivated best-in-class European patent judges will make the UPC a reliable and balanced center of gravity for resolving global patent disputes in a harmonized way. As a result, all good so far and exciting times ahead!

To dive even deeper into this issue, please read our corresponding IP report.

Hello everyone, today my colleague, Niels Malkomes and I will discuss the recent landmark decision of the EPO’s Enlarged Board of Appeal – G1/22 and G2/22 – on Entitlement to Priority. Niels, the practical significance of this decision for patentees and applicants alike cannot be overestimated. It will significantly reduce the risk that patents are revoked for formal reasons. Can you tell us a bit more about the decision?

The decision is about the priority and the entitlement to priority. The priority right is the right of an applicant to have a better effective date so he can file a later application claiming the priority date of an earlier application, i.e.the effective date for the assessment of novelty and inventive step will be the better, earlier date of the priority application. The question whether a patent is valid or invalid very often hinges on the validity of the priority claim.

And under the EPC, the right to claim the priority of an earlier application rests with the applicant of that earlier application or with their successor in title. The decision will make it more difficult to challenge that the applicant of the later application is indeed the true successor in title.

The most common scenario which will be most familiar to US applicants, especially before the America Invents Act, is the following: First, a US application is filed designating the inventor as applicant, and subsequently, an international application is filed that designates the inventor as applicant for the United States only, and the inventor’s employer, or another legal entity, for all other countries.

In this situation the formal validity of the priority claim of the European patent that resulted from the international patent application was often challenged. It was contested that the priority right was actually validly transferred from the inventor – the applicant of the earlier application – to the applicant of the later application. As an opponent, I would not have had to provide any further evidence to support that allegation. I could simply say “Well, it would be up to the proprietor to prove that the priority right was actually validly transferred.”

Therefore, ideally, the proprietor would produce a written assignment of the priority claim dating back prior to the filing of the later application. However, in many cases in the past, the proprietor was unable to provide such an assignment so that many patents got revoked because of the invalidity of the priority claim: The effective date of the application was no longer the date of the priority application but the date of the later application which means that prior art could surface which challenged the novelty or the inventive step of the invention.

With the present decision, the Enlarged Board of Appeal first addresses the question whether it is entitled at all to assess the validity of the priority claim – this is an important question because, for example, the entitlement to the application itself cannot be verified by the EPO, because this is subject to national law.

The Enlarged Board of Appeal decided that the entitlement to priority and the assignment of the application itself are two distinct issues, that the EPO is competent to assess the validity of the priority claim, and that said assessment is subject to the autonomous law of the EPO and not the national law.

They also said that when an applicant claims the priority of an earlier application, there is – and this is, I think, the most important aspect of the decision –a “rebuttable presumption” that this claim is valid. So, without any further conditions attached, this is assumed. And then, the burden of proof is basically shifted to the Opponent to prove that the priority claim is indeed invalid.

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It is a common scenario that a European patent application claims priority of an application that was first been filed in the Unites States.

So, keep these two tips in mind when drafting a U.S. application that might later be prosecuted in Europe:

First: In contrast to the US rules, the EPO allows claims directed to a computer program – without mentioning a storage medium in the claim language.

Therefore, ensure that at least the specification discloses that the invention may be implemented in software – without referring to a storage medium. This allows including a broad computer program claim in the European application later: Such a claim then covers software which is only offered for downloading in a European country.

Second: U.S.-style device claims typically refer to specific hardware components such as processors and memory. However, in Europe, a so-called means-plus-function claim typically provides the broadest possible scope.

Therefore, you should append such a claim to your US application. A European patent attorney may then use this claim instead of the narrower U.S.-style device claim.

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While collaborations between different companies are more and more common, it is astonishing that jointly owned patents lead to legal issues and questions which are still unresolved and not taught in the textbooks. A playing field for us practitioners. Jan, you are one of these practitioners and regularly advise our clients in this field. Could you please give us a brief overview of such cases?

The good case is when both parties are aware of what they are doing: If they combine their knowledge and capacities on purpose and with a specific aim. For instance, we regularly advise clients on publicly funded R & D projects with clearly defined work packages, where it is known beforehand if and where joint inventions may be created. In these cases, the parties can define their future interests in the projected invention, predict potential conflicts and – finally – write this down in an agreement. Here, the parties can define their respective exploitation rights: Are they allowed to sell the invention? And if so: Can they even sell it to competitors? Who is allowed to use the invention? And does the active owner have to compensate the other co-owners? These are typical questions which arise during negotiations of R & D agreements. In most cases, they can be answered to the benefit of both parties in view of their respective market position and specific interests. A second group of cases are those in which the joint ownership occurs “unintentionally”. Be it among friends on the occasion of a different collaboration, be it that a part of the invention is stolen and then further developed.

In the past, an important example of this second group originated from the German Act of Employee Inventors. If the employer did not correctly transfer the invention from the inventor to the company, the inventor was still a co-owner, in many cases together with its employer – the origin of many disputes. Which cases do you like most, Jan?

I like the first group. When drafting the R & D contract, you create a small piece of law, you can weigh the different interests and literally bring the parties together. The second group, in contrast, can lead to awful conflicts.

Let's use the “classical” example of the automotive industry: Imagine a car maker and their supplier having invented a new product which then turns out to be successful on the market. Questions arise: “Is the car maker entitled to source the new devices from other suppliers? And vice versa: Is the supplier entitled to sell the device which it invented itself to other car makers? Even these fundamental questions are not clearly solved in our existing law.

I always find it astonishing that these very simple questions are not easy to answer.

The reason is that our patent law is silent in that regard. It simply reverts us to general civil law which does not differentiate between sailing boats, apple trees, and patents. What is appropriate for apple trees and sailing boats may not be appropriate for patents.

Right. In 2005, the Federal Court of Justice issued a very important decision that answered at least some of these questions. If only one (first) co-owner is practicing the invention, the other (second) co-owner does not automatically receive a remuneration. So, the second owner must engage with the first owner and request a broad exploitation agreement. As part of such an agreement, one could define that the second co-owner is not even allowed to use the invention – but in turn receives a compensation.

It was really a good decision. Unfortunately, it left many questions open and the disputes continued. For instance, it is still not clear if …

For a deep dive into the Unified Patent Court, please visit: https://www.bardehle.com/en/upc-special

In the context of the UPC, the file wrapper estoppel will become highly relevant, because some UPC member states do recognize the file wrapper estoppel in their legal systems. However, other member states, such as Germany, do not. Before we go into detail, Julia, could you explain what “file wrapper estoppel” means?

Under the doctrine of the file wrapper estoppel, statements made by the patentee vis-á-vis the patent office during prosecution are binding. It is noteworthy that in the end we are talking about “clear statements”, as the prosecution history is often rather vague.

However, in some instances, the applicant concedes to a narrow claim interpretation during prosecution proceedings in order to overcome objections of lack of novelty or inventive step. The file wrapper estoppel in these cases prevents the patentee from arguing a broader claim interpretation in subsequent infringement proceedings.

The file wrapper estoppel is also very important for cases which are argued under the doctrine of equivalents. If the applicant does not claim protection for certain embodiments so that such embodiments are not covered by the literal sense of the granted claims, it might be difficult in the light of such prosecution history to claim protection for these embodiments under the doctrine of equivalents.

But some terms may have a very specific meaning in the patent description. And the prosecution history can help to understand what exactly the patentee wanted to protect.

In German patent litigation, statements made by the patentee during prosecution are not binding for claim construction. They can only serve as a mere indication of how the person skilled in the art would understand a certain claim feature.

But there is one exception: Statements limiting the claim scope made during pending invalidity proceedings. Such statements are considered binding and thus limiting the claim scope if the parties in the invalidity and the infringement proceedings are identical.

What is also relevant for claim construction in Germany is the prior art mentioned in the description. A skilled person understands that the patented invention must distinguish itself from such prior art, as it cannot be assumed that the patentee wanted to patent such prior art. Therefore, prior art appreciated in the description is the starting point and one of the most important means of claim construction.

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Patent rights are territorial, meaning that they only apply in the countries where you've obtained legal protection. This means, selecting the right countries to protect your invention can be crucial in ensuring that your intellectual property is protected where it matters most.

While there is no one-size-fits-all answer, there are several factors you can use as a checklist when considering where to file or validate your patent.

This also includes countries where you have manufacturing units, suppliers, or existing customers; in the case of digital inventions, it could be the location of your server, for example. If you plan to expand your business into a particular country, it may make sense to seek patent protection there.

Second, what is the potential market for your invention? Is it a niche or a mass-market product? This can help you prioritize countries where your invention is likely in high demand.

Additionally, you may also consider the presence of competitors in those countries, as patent protection can help you prevent competitors from using your invention.

Can you make use of certain enforcement mechanisms? For instance, if your product is at risk from infringers importing them into your market, deciding to protect it in countries that act as an entry ports can allow you to use the customs enforcement mechanism to stop entry into a wider market.

Finally, what are the cost and complexity of obtaining and enforcing patents in different countries? Depending on your invention, you may decide based on the cost of obtaining a patent relative to the market size.

In summary, every business's needs are unique, but by considering these general factors, you can develop a strategy tailored to your individual circumstances, protecting the value of your intellectual property.

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Philipe, what are AI generated works in the first place and what is the question?

Well, Jan, to put it simply, AI generated works are creations that have been developed by a computer program instead of a human being. The most fundamental question in connection with AI and copyrights is whether such creations are eligible for copyright protection at all. The question arises because, according to our German and also the general European understanding, only humans can be creators in terms of copyright law. In the case of AI generated works, humans have admittedly created the AI, but not the specific creation. Unlike creations that have been developed with the mere help of computer technology, the special characteristic of AI generated works is that - even though humans can dictate the general line of art – the final result is ultimately beyond human control.

That’s correct. I can, for example, ask Open AI’s Dall-E to create an expressionistic painting for me, or ask ChatGPT to generate a winter poem. In both examples, I dictate general direction, but leave all further decisions to the AI. These decisions do not only refer to details of the outcome. However, only an intellectual creation of one’s own is considered as a work in the sense of German copyright law, and according to our current understanding, an intellectual creation by my own requires the creative act of a me as a human being. The same applies if one refers to the European concept of works based on European case law, according to which a work qualifies as an intellectual creation only if the personality of an author is expressed. Does that mean that AI-generated works are generally not entitled to copyright protection? After all, not only can I steer the AI in a general direction with general instructions, I can also tell it quite specifically what to do.

Correct. If I define the conditions of the creation so specifically that the result is not completely undetermined and appears to be mere coincidence, but rather the expression of my concrete human will, such creations should be protectable under copyright law. However, the requirements for such human specifications are currently quite strict. By the way, this is not only the case in Germany, but also in the United States. But while we here in Europe are still in the process of discussing how to deal with AI-generated works, the US Copyright Office has already rendered guidelines in March 2023, explaining in more detail the distinction between AI-generated works on the one side and human creations on the other. According to said guidelines, to the extent that traditional elements of authorship are ultimately determined and executed by the AI and not a human, respective creation is assignable to the AI and not to a human. In this case, copyright protection is ruled out. So, in the end, it is a question of whether I gave rather general instructions to the AI, whereas the specific result remains open, so that numerous complex decisions regarding the literary, the artistic, or the musical expression or the elements of selection and arrangement are made by the AI during the creation. The mere request to the AI to create something is thus treated like the instruction to a commissioned artist, where the artist is given the framework, but the implementation is left to the commissioned artist him- or herself.

This is transferable to German copyright law. It is already recognized that the selection and creative composition of content may be sufficient to substantiate your copyright protection. Even the case in which AI-generated works are used as a starting point for new creations should be covered by German law already. So, in conclusion, no need for action in the field of AI and copyrights?

There rather isn’t. A special ancillary copyright, which would protect AI-generated material independently of human creation, is often mentioned, but does not seem to be absolutely necessary. In any case, it has to be seen how the areas of application of AI will develop.

This is exactly what we will do to keep you informed of must knows in the field of AI and copyright. Thank you for your attention!