HOFFMANN EITLE Quarterly Newsletter 12/22

Publication | 19.12.2022

Dear Colleagues and Friends,

In this issue of the Hoffmann Eitle Quarterly, we continue with our series of articles addressing patenting computer-implemented inventions and artificial intelligence at the EPO, with an article on the inventive step requirement for these inventions. In the second article, we look at how the EPO Boards of Appeal and German courts assess whether a post-grant amendment to a patent results in an impermissible extension of the scope of protection, and how indirect infringement interestingly comes into play in this assessment. In the third article, we then examine how genome editing inventions are assessed at the EPO, and how broad claims covering these inventions are most likely to be obtained. The next article reviews a recent court decision illustrating the limits of trademark protection in Germany, which is then followed by an update on the ongoing dispute concerning the “Spezi” trademark. The sixth article gives an update on the important case G2/21 pending before the EPO’s Enlarged Board of Appeal, which deals with the extent to which post-published evidence can be relied upon when assessing a technical effect for inventive step. We then discuss two recent court decisions on the validity assessment in German provisional injunction proceedings, and we then conclude by presenting Hoffmann Eitle’s book The Unified Patent Court and Unitary Patent: A Practitioner's Handbook, hot off the press.

We hope that you will find this issue of the Hoffmann Eitle Quarterly informative, and, as always, we very much welcome your feedback.

Nicolas Douxchamps
Editor-in-chief of the Hoffmann Eitle Quarterly
Ir. (Electrical Engineering)
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & IT Practice Group

Hoffmann Eitle Quarterly

Driven by Technology: Patenting AI Before the European Patent Office (Part III)

In this third article of our series on artificial intelligence (AI) inventions (see the first here and the second here), we focus on inventive step and technical effects with respect to inventions in that field, with an eye to ensuring the claimed AI can support an inventive step and to proving the presence of a technical effect resulting from the claimed AI.

Link to the article 

Amendments After Grant and Indirect Infringement – “Broader Protection” Due To Narrower Scope?

Claims can be amended after grant in opposition, nullity or limitation proceedings – but only if the scope of protection is not extended. This article addresses the criteria for assessing a potential extension in the EPO and Germany and discusses the relevance of indirect infringement in this regard.

Link to the article 

Genome Editing and Morality at the EPO

What triggers an objection of exception to patentability under Article 53(a) and Rule 28(1)(d) EPC for genome editing inventions? Is a mere possibility of abuse of the invention for modifying the genetic identity of cells or non-human animals sufficient to deny patent protection in Europe? These questions are explored using as an example an opposition to a European patent covering CRISPR-based genome editing and a number of decisions of the Boards of Appeal of the EPO.

Link to the article 

“BLESSED”: Owning a Trade Mark Is Not Always a Blessing

The Higher Regional Court Frankfurt (OLG Frankfurt) held in its decision 6 U 40/22 of June 2, 2022 that the imprint of a commonly known verb on the front of a garment would be perceived as a descriptive term by the public. This led the Court to decide that the word had not been used as a trade mark and thus its use could not infringe prior trade mark rights for the identical term “BLESSED”.

Link to the article 

The History and Entanglement of the “Spezi” Trademark; Paulaner’s “Spezi” Will Remain on the Market for Now

Link to the article 

Plausibility and G2/21

The referral G 2/21 to the Enlarged Board of Appeal (EBoA) asks if and under what circumstances post-published evidence can be relied upon when assessing a technical effect for inventive step. The EBoA seems to consider that post-published evidence can be relied upon, unless there were significant reasons to doubt the effect on the date of filing.

Link to the article 

Preliminary Injunction Proceedings in Germany - New Opportunities for Patentees in Munich?

This update summarizes two recent decisions on the validity assessment in German provisional injunction (PI) proceedings.

Link to the article 

The UPC Might Not Be Quite Ready Yet, but You Can Be - The Practitioner’s Handbook

Link to the article 

Should you have any questions or need more information, please do not hesitate to contact us.

With best regards,