HOFFMANN EITLE Quarterly Newsletter 06/26
Publication | 22.06.2026
Dear Colleagues and Friends,
Five years ago, we launched the Hoffmann Eitle Quarterly. This issue marks that anniversary, and we celebrate it with eight new insightful articles.
We open with the German Federal Court of Justice's latest word on the FRAND defence: licence-willingness is not a box to tick but a commitment to demonstrate throughout negotiations. The second article examines use claims as a powerful strategy for protecting consumables. The third contribution reports on the end of an era at the EPO, where numerical subranges no longer receive special treatment for novelty and must now pass the same gold standard as any other feature. We then turn to a decision of the German Federal Patent Court, where, exceptionally, size ratios could be derived from patent drawings. The fifth article analyses a Stuttgart District Court judgment on 3D trade marks and considers whether European case law on similarity of goods should be given greater weight. Next, R 16/23 brings welcome clarity by reaffirming the right to oral proceedings before the EPO. Our seventh article surveys the rapidly expanding reach of UPC jurisdiction in cross-border patent litigation. Finally, we continue our series comparing substantive UPC law with the approaches of the EPO and national courts.
As always, we hope you find this issue informative, and 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
The FRAND Dance Revisited: Commitment, Not Choreography
The German Federal Court of Justice has further refined the conditions under which implementers of standard-essential patents may rely on the FRAND defence. In FRAND-Einwand III, the Court emphasises that an implementer's willingness to take a licence must be demonstrated throughout the negotiations and cannot be reduced to a formal declaration. The decision further strengthens the German courts' attractiveness for SEP holders, on par with, if not surpassing, that of the Unified Patent Court.
Link to the article
Effective Patent Protection for Consumables: A Case for Use Claims
Numerical Subranges at the EPO: From Special Treatment to Gold Standard
The EPO's treatment of numerical subranges is undergoing a significant shift. Following T 1688/20 and the 2026 Guidelines update, novelty of numerical subranges is now assessed using the gold standard of direct and unambiguous disclosure, replacing the traditional "narrow and sufficiently far removed" criteria. This alignment with the standard used for other types of features has implications for applicants, patentees and opponents defending or attacking numerical subranges.
Link to the article
When a Picture Says More Than a Thousand Words
In German patent practice, it is rarely possible to derive size ratios from patent drawings. This article presents a recent decision by the German Federal Patent Court, in which the Court found that size ratios could exceptionally be derived from drawings when there is a close correspondence between the size ratios in the description and the drawings.
Link to the article
3D Trade Mark Case: Relevance of European Decisions for the Assessment of the Similarity of Goods
R 16/23: The Right to Oral Proceedings Affirmed at the EPO
In J 6/22, the Legal Board of Appeal of the EPO held that a request for oral proceedings need not be granted if the oral proceedings would serve no legitimate purpose. That line of reasoning has now been rejected by the Enlarged Board of Appeal in R 16/23. The Enlarged Board held that, where oral proceedings had been requested before an adverse decision on re-establishment of rights and the admissibility of the appeal, the Board was required to appoint them under Article 116(1) EPC. By deciding the case in writing instead, the Legal Board committed a fundamental procedural violation, with the consequence that J 6/22 was set aside, the proceedings were re-opened, and the petition fee reimbursed.
Link to the article
Breaking Borders: The Expanding Reach of UPC Jurisdiction
Since the Court began operating, claimants have been testing the limits of the UPC's jurisdiction, targeting not only single entities, but also entire company groups. Jurisdiction within the European Union is governed by the Brussels I bis Regulation, for both national courts and supranational courts such as the UPC. Given the existence of competing jurisdictions for questions of patent infringement and validity, a strategic market for forum shopping has developed, with parties assessing which forum is likely to offer the best prospects of success.
Link to the article
UPC Substantive Law - Comparisons With the EPO and National Courts
Link to the article
Should you have any questions or need more information, please do not hesitate to contact us.
With best regards,
HOFFMANN EITLE