HOFFMANN EITLE Quarterly Newsletter 03/24

Publication | 21.03.2024

Dear Colleagues and Friends,

In this issue of the Hoffmann Eitle Quarterly, we continue our series of articles focusing on the new package of draft EU regulations, with a first article on the proposed centralised examination procedure for supplementary protection certificates (SPC) in Europe and a second article on a draft Regulation for a EU compulsory license for crisis management. The third article examines a recent ruling by the European General Court on the protection of a three-dimensional mark representing a Vespa model, which is followed by an article on the increasing significance of gender-neutral language in IP contexts. The next article presents Hoffmann Eitle's significant contributions to the development of European case law in 2023. In the sixth article, recent changes to the EPO Rules of Procedure of the Boards of Appeal are discussed, and the following article looks at the EPO requirements for signatures on assignments and how a recent decision of the Legal Board of Appeal has led to a change in the law in this respect. Finally, we summarize the key findings of the UPC Court of Appeal in its first ever substantive decision. We hope that you will find this issue of the Hoffmann Eitle Quarterly informative and, as always, we welcome your feedback. 

Nicolas Douxchamps
Editor-in-chief of the Hoffmann Eitle Quarterly
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & Digital Technologies Practice Group

Hoffmann Eitle Quarterly

New EU Legislation Proposals (Part III): Centralised Examination Procedure for SPCs and Legal Remedies

In our last contribution to the Hoffmann Eitle Quarterly, we looked at the new SPC landscape proposed by draft EU legislation issued in April 2023. This includes a framework for unitary SPCs - as an extension of the European patent with unitary effect (EP-UE) - and an overhaul of the procedure for obtaining the traditional, national SPCs which are granted by national patent offices. Whilst our last article focussed on the eligibility and jurisdiction of each type of SPC, we now turn to the centralised examination procedure and the legal remedies which will be available to parties. Finally, we look at recent changes to the April 2023 proposals and the current state of the legislative procedure.

Link to the article

New EU Legislation Proposals (Part IV): Regulation for a Union Compulsory License for Crisis Management

Last year, the European Commission presented proposals for new patent rules including a draft EU Regulation on compulsory licensing for crisis management. If accepted by the EU Parliament and the Council of the EU, the regulation would create a new EU-wide compulsory licensing instrument that complements EU crisis instruments in the life science field. During the COVID-19 pandemic, the lack of such an instrument was criticized. The new rules can only be activated in case of a major EU-wide crisis. 

Link to the article

The European General Court Keeps the Vespa Moving: The Legal Challenge of Preserving the Protection of a 3D Trademark

In its decision of November 29, 2023 (Ref.: T-19/22), the European General Court found that the three-dimensional mark representing a Vespa model had no intrinsic distinctiveness but rather had acquired distinctiveness and that the mark is therefore eligible for trademark protection. 

Link to the article

The Skilled Person Uses "They/Them" Pronouns, and Why You Should Care

Hoffmann Eitle looks at the status of using inclusive language in legal (IP) texts, and the consequences of its non-use from both a business and legal perspective.

Link to the article

Hoffmann Eitle's Significant Contributions to the Development of European Case Law in 2023

Link to the article

EPO Amends the Rules of Procedure of the Boards of Appeal (RPBA) 

Last year, we discussed and provided a critical analysis of the proposed amendments to the RPBA, which govern appeal proceedings before the EPO Boards of Appeal. The EPO has now amended the RPBA, taking some of our concerns into account. The amended RPBA came into force on 1 January 2024, and in the following we highlight the main amendments which relate to Articles 13(2) and 15(1). 

Link to the article

Electronic Signatures Accepted Again: The EPO Reacts Quickly After J 5/23 

Documents providing evidence of a transfer of rights at the EPO must be signed (Art. 72 EPC). A Notice dated 22 October 2021 provided that qualified electronic signatures, in addition to handwritten signatures, would be accepted in respect of evidence filed in support of requests for registration of a transfer of rights, licences or other rights. The Legal Board of Appeal overturned this Notice in decision J 5/23 and clarified that the signatures required under Art. 72 EPC had to be handwritten signatures; text string signatures or qualified electronic signatures were not considered valid. The Administrative Council has now amended the Implementing Regulations to the EPC to again allow digital signatures, text string signatures and text facsimile signatures in this specific context.

Link to the article

UPC CoA Revokes Provisional Injunction Against NanoString 

Link to the article

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

With best regards,