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Dear Colleagues and Friends,

In this issue of the Hoffmann Eitle Quarterly, we begin with an article that revisits the recurring issue of the unitary patent and the Unified Patent Court, whose entry into force may be much closer than expected. We then take a look at two recent decisions of the EPO Boards of Appeal on the inventive step of medical use claims, which point to the emergence of new hurdles for patentability of such claims. The next article discusses a decision of the European Court of Justice (ECJ) that expands the registration of trademarks in Europe. We then explore the fascinating issue of additional remuneration due to employee-inventors in France. This is followed by a brief summary of the forthcoming technical transition to a new global standard for sequence listings, which is of particular importance to all those dealing with biotech inventions. Finally, a brief update is provided on Enlarged Board of Appeal decision G 1/21 concerning oral proceedings by videoconference at the EPO.

We hope that you will find this issue of the Hoffmann Eitle Quarterly informative, and, as always, we welcome any 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

Time to Dust off Strategic Plans for the European Patent with Unitary Effect and the Unified Patent Court?

A further roadblock has been removed for the Agreement on a Unified Patent Court (UPCA) and by extension the entire EU Patent Package to come into force, possibly by mid-2022. The three-month sunrise period for patent proprietors to opt out their EP applications, European patents or SPCs from the competence of the Unified Patent Court could commence accordingly in spring of next year. Thus, it may be time to shake off this groundhog-day feeling and revisit the strategic planning from 2017. Applicants may moreover consider how the European Patent with Unitary Effect (also referred to as Unitary Patent) factors in their filing strategy. And (prospective) plaintiffs and defendants in patent infringement suits will have to take the Unified Patent Court into account for their litigation strategies.

Link to the article

Difficult Times ahead for Establishing Inventive Step of Medical Use Claims at the EPO

Establishing inventive step of medical use claims at the EPO looks set to become more difficult. T 2443/18 widens the choice of closest prior art documents, opening up more obviousness attacks. T 96/20 reinforces difficulties in establishing inventive step after the publication of planned trials.

Link to the article
"#darferdas?": The European Court of Justice Expands the Registrability of Trademarks

The European Court of Justice (ECJ) held in its decision C-541/18 (AS vs GPTO) of September 12, 2019 that the distinctive character of a sign applied for as a trademark -a prerequisite of eligibility for trademark protection- must be assessed in the light of all the relevant facts and circumstances. This includes all the likely uses of the trademark applied for. This decision expands the registrability of trademarks in Europe.

Link to the article
Additional Remuneration for Employees' Inventions Made in France

An additional remuneration is due each time employee-inventors make a patentable invention within their duties in France. This article presents the results of a jurisprudential and doctrinal review of this essential requirement for the development of inventions in France.

Link to the article
Biological Sequence Data: XML is the New TXT

When it comes to patentability of biological sequences, the format in which nucleotide or amino acid sequences are disclosed greatly matters for defining their structure and function. In 2022, the World Intellectual Property Organization (WIPO) will transition to a new global standard for disclosing biological sequences in sequence listings. In the following, we provide an overview of the changes brought by the new XML-based Standard ST.26 over the current TXT-based Standard ST.25.

Link to the article
G 1/21 – Oral Proceedings by Videoconference at the EPO, a Brief Update

On July 16, 2021, the Enlarged Board of Appeal issued its order in case G 1/21. As a reminder (see Hoffmann Eitle Quarterly June 2021, pp. 11-12), the question referred to the Enlarged Board related to whether the current EPO practice of holding oral proceedings by videoconference (ViCo), even without the consent of all parties, is legal under the European Patent Convention (EPC) in its current form. The Enlarged Board of Appeal answered with a qualified yes.

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