With the Epidemic Protection Act of March 27, 2020, Germany declared an "emergency of national
dimension" in view of the COVID-19 pandemic. At the same time, tensions and international pressure
to "abrogate certain IP rights" increased. In addition to the Federal Republic of Germany, there are
numerous other countries around the world that, in principle, can make use of emergency decrees to
fundamentally restrict patent rights, such as in the United Kingdom, France, the United States,
Canada, Israel, Australia, China, Japan and Korea. However, up to now, in the summer of 2021,
neither an order for use (Section 13 PatG) nor - according to current knowledge - an action for a
compulsory license (Section 24 PatG) has been brought before the courts responsible for this. The
demand to be met is enormous, especially for vaccine developments that have been described as
The following download pdf summarize why this is so - despite numerous and strongly debated demands.
The German Federal Constitutional Court rejected the two pending applications for a temporary injunction directed against the Act on the Agreement of 19 February 2013 on a Unified Patent Court. With this decision, the Federal Constitutional Court has cleared the way for a timely ratification of the UPC Agreement and thus for the entry into force of the Unified Patent Court UPC, probably in 2022.
After more than seven years struggling, the Agreement on a Unified Patent Court had eventually come into force on 18 December 2020 and had been stopped shortly thereafter by the above mentioned two applications for a temporary injunction.
In an order published on July 9, 2021, the Second Senate of the Federal Constitutional Court rejected the two pending applications for a temporary injunction.
The Senate based its decision on the ground that the constitutional complaints are inadmissible on the merits because the complainants have not sufficiently substantiated the possibility of a violation of their fundamental rights, in particular a violation of the principle of the rule of law, nor of a violation of the fundamental right to effective legal protection, nor of a violation of Union law.
As a result, the German Federal President is now free to sign the necessary documents which would allow the UPC to enter into force. In the German legal community, it is generally believed that the UPC Agreement could start in the second quarter of 2022.
In the Unitary Patent system (UPS), applicants of European patent applications will, after grant of the European patent, have the choice to request and obtain a unitary effect of their patent in those states which have signed and ratified the Agreement. At present, the following 15 States have signed and ratified the UPC Agreement: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden.
The UK had withdrawn its ratification in connection with Brexit and is not any more a member of the UPS and the UPC; however, this will have no effect with regard to the European patent which can still be designated for the UK as the UK remains a member of the EPC.
Further, Spain, Croatia and Poland have indicated that they will not ratify the UPS and the UPC as well.
Nevertheless, it can be expected that additional EU Member States will ratify the UPC Agreement at a later date.
In view of these new circumstances, we would like to draw attention to the fact that the Unified Patent Court will not only have jurisdiction over future unitary patents, but also over existing European patents. I.e. an existing European patent may be subject to a central invalidity attack before the so-called Unified Patent Court as of the date of entry into force of the new regulation and thus fall at once for all participating EU member states (see above) where the patent has been validated (note: validations of the European patent in non-EU member states remain unaffected). As a countermeasure, the possibility has been created for existing patents to opt out of this system (so-called opt-out), so that only the national patent courts of the member states in which the patent was validated will continue to have jurisdiction.
We therefore recommend that you should now promptly review your existing European patent portfolio to decide which patents you should opt out of the new system. Please do not hesitate to contact us if you have any questions.
Further information on the decision of the Federal Constitutional Court can be found here.
Please contact us for any questions.
Jürgen Feldmeier, LLM
proofread: Dr. Andreas Oser
Wir freuen uns sehr bekannt zu geben, dass unsere Kollegin Frau Rechtsanwältin Agnieszka Furmanczuk den Titel Fachanwältin für gewerblichen Rechtsschutz verliehen bekommen hat. Dieser Titel dient als Nachweis einer umfangreichen praktischen Erfahrung und besonderer Kenntnisse im IP-Bereich.
Frau Furmanczuk, die sich im IP-Bereich vor allem auf die markenrechtliche Beratung und das Arbeitnehmererfinderrecht spezialisiert hat, unterstützt Sie mit ihrer Erfahrung kompetent bei der Anmeldung und Durchsetzung von Marken und berät zum Aufbau und der Strukturierung von Markenportfolien auf nationaler und internationaler Ebene. Die Kombination von 4.0-Technologien mit der traditionellen Beratungstätigkeit als Anwältin ermöglicht es ihr, Markenportfolien von Mandanten oder deren Wettbewerbern effizient zu analysieren, zu benchmarken und zu bewerten. Im Rahmen der Beratung zu IP-Strategien unserer Mandanten koordiniert Frau Furmanczuk internationale Maßnahmen zum Plagiatsmonitoring und zur Plagiatsbekämpfung. Ihr Fachanwaltstitel spiegelt somit Frau Furmanczuks vertiefte Kenntnisse und Kompetenzen im IP-Bereich wieder.
Wir beglückwünschen Frau Furmanczuk zu diesem Erfolg und sind sehr froh, dass unsere Mandanten von ihren besonderen Fachkenntnissen und ihrer Erfahrung profitieren können
From recent EPO case law on the question of patentability of software-related inventions -
The Enlarged Board of Appeal of the European Patent Office recently published the eagerly awaited decision G 1/19, shedding light on the question of how computer-implemented simulations are to be assessed in patent application proceedings.
To anticipate the result: they are to be treated in the same way as other computer-implemented inventions and do not occupy a privileged position among them. No new principles are introduced, known ones are at best refined. Those who are familiar with the COMVIK principles established in T 0641/00 and who are able to recognize the decisions T 1227/05 and the referring T 0489/14 as extreme examples for more liberal or stricter grants, respectively, will probably come to at least reasonable results in the evaluation of the patentability of the subject matter even without reading G 1/19.
Does that make G 1/19 any less worth reading? Not at all. It contains a readable, condensed, yet thorough discussion of the relevant case law on the limits of patentability of computer-implemented inventions in general and computer-implemented simulations in particular. Here, even excursions into national case law ("Rote Taube", "Logikverification") are made, even if these remain superficial. Specialists in computer-implemented inventions will not be able to avoid reading the almost 70-page decision anyway, but also the interested or the generalist in patent law is recommended to read it.
In the recently published handbook for Germany, the publisher The Legal 500 recognises Prüfer & Partner as Leading Firm in the field of patent application and office actions. The Munich boutique Prüfer & Partner convinces with its brisk filing activity before the German Patent and Trade Mark Office (GPTO) and the European Patent Office (EPO) as well as its continuously growing business in China.
'The level of service is excellent. Their responses are always very quick and appropriate.'
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'Excellent and highly agile capacity provision; even short-notice requests are always handled and finalised in a highly professional manner. Strong problem-solving awareness even with complex non-standard requests.'
'Jürgen Feldmeier: Very good and broad technical understanding; excellent direct 'line' to developers and inventors; holistic understanding of company-specific strategies and processes.'
The renowned research agency for in-house counsels, The Legal 500, has been dealing with law firm recommendations since 1987. As part of its research, the independent team of experienced editors conducts hundreds of interviews with lawyers and surveys more than 23,000 clients every year. The research feeds into a detailed analysis that provides a comprehensive and thorough assessment of law firms' strengths and capabilities across a wide range of practice areas.
It looked like it was finally done: on November 26, 2020, the German Bundestag had passed the ratification law on the Unified Patent Court for the second time - and now correctly with the required two-thirds majority. Only a few days later, the second chamber, the Bundesrat, had also waved the law through. This seemed to clear the way for the start of the Unified Patent Court. However, unsurprisingly, two appeals have now been filed with the Federal Constitutional Court.
As a reminder: as we reported on March 20, 2020, the BVerfG had declared the German law approving the UPC and the EU unitary patent null and void due to the lack of the required two-thirds majority. This problem had been solved by the German Bundestag and Bundesrat shortly before the turn of the year, and it seemed that entry into force would only be a formality in the form of the signature of the Federal President.
Now, at the beginning of the year, the BVerfG has again received two constitutional complaints directed against the law on the Agreement of February 19, 2013 on a Unified Patent Court, as a press spokesman of the BVerfG confirmed to LTO (Ref. 2 BvR 2216/20 and 2 BvR 2217/20). Next, it remains to be seen whether the BVerfG will accept the complaints or not. If it does not accept the appeals, the Unified Patent Court and the Unitary Patent can be launched in 2021 and is expected to begin operations in 2022. However, if any one of the appeals will be accepted by the court, we can again expect longer delays.
So even without the UK, it's just a case of wait and see... we'll stay tuned.
If you have any questions, please do not hesitate to contact us.
Jürgen Feldmeier, LL.M., Prüfer & Partner (E-Mail: email@example.com)