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Dear Colleagues and Friends,
In this issue of the Hoffmann Eitle Quarterly we begin with an analysis of the EU Commission's long-awaited Teva decision, addressing the use - and
alleged misuse - of divisional patents. Our second article explores prior use rights in UPC proceedings, with a particular focus on the "good faith" requirements.
We then turn to a comparative piece on EU and Japanese design law, examining how each system defines "design". Next, we delve into the emerging issue of AI-generated
content and its role in claim interpretation before the EPO and in China. Our fifth article discusses two decisions issued by the EPO Boards of Appeal without holding
oral proceedings, despite the appellant's explicit request. Finally, we review recent developments in EPO case law relating to the so-called carry-over requests and
objections. As always, we hope you find this issue of the Hoffmann Eitle Quarterly informative and 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
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Divisionals and
Competition Law: Status Quo
After the Teva Decision
In October 2024, the EU Commission issued a decision, imposing a fine of €462.6 million on Teva for abusing its
dominant position through, inter alia, misusing of divisional patents ("divisionals") to artificially prolong legal
uncertainty for competitors, thus hindering their market entry. This article examines the Commission's reasoning, which
was published in April 2025, with a particular focus on where the boundaries are between a lawful use of
divisionals and an unlawful misuse, for which the Commission coined the term "playing the divisional game".
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The Prior Use Right as a Defence
in UPC Infringement Proceedings
So-called prior use rights allow under certain requirements the continued use of patented inventions, even after
the invention has been patented. In UPC proceedings, defendants must prove such rights separately in each
Contracting Member State under respective national laws, in particular to meet the "good faith" requirements.
This creates strategic challenges for both claimants and defendants in multi-jurisdictional patent enforcement.
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EU vs. Japan: What Truly Makes a Design?
The Riyadh Design Law Treaty paves the way for
streamlined and harmonized global design protection. The recent entry into force of the EU Recast Design
Directive and Amended Regulation indicates that the EU is moving in a positive direction to restructure the current
design framework to ensure it is future proof, but additional adjustments will be required to ensure legal and
procedural convergence with other WIPO member states. An initial exercise should therefore include the
identification of the commonalities and differences between the member states, starting with the definition of
what is meant by "design". In this regard, we specifically look at the legal frameworks in the EU and in Japan.
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Use of AI-Generated
Content as Evidence for
Claim Interpretation
at the EPO and in China
Claim interpretation is important not only during examination proceedings, when assessing novelty and inventive
step, but also in legal disputes about the meaning and scope of patent claims. With the widespread use of artificial
intelligence (AI) and, in particular, large language models (LLMs), one might wonder to what extent AI-generated
content can be used in that context.
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T 1874/23 et al:
The Right to Oral Proceedings at
the EPO Under Attack
Article 116(1) EPC prescribes that oral proceedings shall take place either at the instance of the European Patent
Office (EPO) if it considers this to be expedient or at the request of any party to the proceedings. Hence, a party
to the proceedings who has requested oral proceedings expects the EPO to grant the request. In case T 1874/23, the Board rejected both the
appellant’s request for re-establishment in the time limit for filing the appeal, as well as the appeal itself without
holding oral proceedings, despite the appellant having requested them.
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Carry-Over Elements at
the EPO: Admissibly Raised
and Maintained?
Although the EPO Guidelines state that auxiliary requests filed in response to the summons to oral proceedings
cannot, as a rule, be considered as late filed, this statement may give proprietors in opposition proceedings a false
sense of security, in view of the RPBA. We also address what it means for opponents to raise and maintain
objections and arguments in the first instance oral proceedings.
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Should you have any questions or need more information, please do not hesitate to contact us.
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With best regards,
HOFFMANN EITLE
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