SONN Patentanwälte – IP Attorneys

  1. Territorial Scope of Injunction

    The claimant requests that the defendant cease infringement not only in the territory of France, but also in Germany, the Netherlands, and the United Kingdom. The claimant relies on official reports from the judicial commissioner regarding purchases made via the defendant's website, through which...

  2. UPC Local Division: Applicable Law

    The determination of the applicable substantive law in the case of an alleged infringement is to be strictly distinguished from the question of jurisdiction to decide on the action. When determining the applicable substantive law, the fundamental principles of the prohibition of retroactivity, as...

  3. UPC Local Division: Financial Compensation

    Financial compensation for the use of the published EP application also falls within the jurisdiction of the UPC (Article 32(1)(f) UPCA). Since such compensation is not regulated in either the EPatVO or the UPCA, the court must apply the provision of Article 67 EPC on the basis of Article 24(1)(c)...

  4. UPC Local Division: Preliminary Objection

    Questions of fact and law that are relevant both for jurisdiction under the UPCA in relation to the national courts of the Member States and for the merits of the action are generally not to be decided in the procedure on preliminary objections, but are to be reserved for the substantive proceedings....

  5. UPC Local Division: Jurisdiction Non-UPCA Member States

    According to the CJEU 25. 2. 2025, C-339/22, BSH Haushaltsgeräte, the UPC remains competent for infringement actions concerning patents in non-UPCA Member States even if the defendant disputes the validity of that patent by way of a defence in the infringement proceedings. Accordingly, the UPC remains...

  6. UPC Court of Appeal: Applicability

    There are no transitional provisions in connection with Article 34 UPCA. When a signatory state of the UPC ratifies and accedes to the agreement, the application of Article 34 UPCA should take place automatically and without restrictions from the day of accession (UPC 3. 3. 2025, CoA 523/2024).

  7. UPC Local Division: Right of Prior Use

    Insofar as German law applies to a private right of prior use pursuant to Article 28 UPCA, it is necessary that a firm and final decision on the use of the claimed prior use was made before the priority date (LK Mannheim 2. 4. 2025, CFI 365/2023).

  9. Technicity of a method for mental acts

    The decision of the upper regional court of Vienna) dated September 18, 2018, (OLG Wien, 133 R 41/18 d) deals with the technicity exclusively with regard to method claim 1. During the application procedure, claim 1 had been amended by including the limitation that the claimed method is used for the...

  10. EPO case law: Admissible appeal of a German company extinguished from the company register

    Whether an opponent can be regarded as a legal entity in an ongoing opposition appeal proceedings and can validly act in these proceedings is a matter of the national law of the state where the opponent is incorporated (in this case: Germany); see decision G 1/13, point 6 of the reasons for the...
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