SONN Patentanwälte – IP Attorneys

UPC Local Division: Procedural Decision: Imposition of Penalties for Delayed Preservation of Evidence

The Copenhagen Local Division ordered the preservation of evidence. During the implementation of the measure, the defendants refused access to critical IT systems contrary to the court order. The court then issued an order requiring the defendants to pay a penalty of EUR 5,000 per day until the required...

UPC Court of Appeal: Added subject-matter in the context of earlier applications:

• The court may, when examining an allegation of added matter, of its own motion determine that the skilled person cannot derive a corresponding disclosure from the earlier application. This determination must be made on the basis of the understanding of the skilled person when reading the earlier...

UPC Local Division: Substantive Decision: Indirect Patent Infringement, Legal Consequences, Provisional Damages

An order for recall, final removal from the channels of commerce and destruction is generally not considered for products that are only attacked by way of indirect patent infringement, as these are not "the subject-matter of the patent". Even if R 119 RoP provides for the possibility of awarding...

UPC Local Division: Substantive Decision: Effect of Limitation, Infringement in a Third Country

The unconditional amendment of the Unitary Patent in the counterclaim proceedings has retroactive effect to the date of grant. However, the infringement of the national part of a European patent in a state that is not a member of the UPCA (here: Switzerland) is to be assessed on the basis of the...

UPC Local Division: Substantive Decision: Interpretation, Infringement

A patent infringement is not excluded by the fact that a device is normally operated in a non-infringing manner and that customers therefore regularly do not make use of the patented teaching, as long as the use of the patented teaching remains possible when using the device. In the case of a medical...

UPC Court of Appeal: Executive liability in the context of infringement

An "infringer" within the meaning of Art. 63 UPCA in conjunction with Art. 25 UPCA is also a person who does not personally carry out the acts referred to in Art. 25 UPCA but to whom the acts of a third party are attributable because they are an instigator, co-perpetrator or accessory. Who qualifies...

UPC Local Division: Substantive Decision: Bifurcation, Binding Effect, Amended Claims

In separate proceedings in which the counterclaim for a declaration of invalidity was referred by the Local Division to the Central Division (bifurcation), the Local Division is bound by the new wording of the claims resulting from the amendment of the patent in suit by a decision of the Central...

UPC Local Division: Substantive Decision: Interpretation, Acts of Use, Injunction Order

A process claim drafted as a further independent claim and the corresponding description can only be relevant for determining the scope of protection of an independent product claim to the extent that there are indications in the patent specification that this also describes properties of the claimed...

UPC Local Division: Substantive Decision: Dismissal of Infringement Action for Lack of Substantiation, Conditional Counterclaim

The Mannheim Local Division dismissed the infringement action regarding the patent in suit because the plaintiff could not sufficiently demonstrate that the attacked embodiments implement the features of the patent. The dispute centered on the interpretation of the function of the "broker" (feature...

UPC Court of Appeal: Problem-Solution Approach for assessing inventive step

The approach taken by the Unified Patent Court when establishing inventive step under Art 56 EPC is as follows:

• It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the person skilled in the art, with...