Patents, inventors, jurisdictions, and a European Union Court decision

The European Court has ruled in the patent case C‑399/21 IRnova AB v FLIR Systems AB. This dispute has the following background:

IRnova and FLIR Systems, active in the infrared technology sector, are companies with their registered office in Sweden. They had a business relationship in the past.

On 13 December 2019, IRnova brought an action before the Patent and Market Court seeking, inter alia, a declaration that it had a better right to the inventions covered by international patent applications, subsequently supplemented by European, United States and Chinese patent applications deposited by FLIR in 2015 and 2016, and by United States patents granted to FLIR on the basis of those latter applications.

In support of that action, IRnova had stated, in essence, that those inventions had been made by one of its employees, meaning that that employee had to be regarded as their inventor or, at the very least, as their co-inventor. IRnova therefore argued that, as the inventor’s employer and thus successor in title, it had to be regarded as the owner of the said inventions. However, FLIR, without having acquired those inventions or otherwise being entitled to do so, deposited the applications mentioned in the preceding paragraph in its own name.

The Patent and Market Court declared that it had jurisdiction to hear Irnova’s action relating to the inventions covered by the European patent applications. On the other hand, it declared that it did not have jurisdiction to hear the action relating to its alleged right to the inventions covered by the Chinese and United States patent applications deposited by FLIR and by the United States patents granted to FLIR, on the ground, in essence, that the action concerning the determination of the inventor of those latter inventions is linked to the registration and validity of the patents. In view of that link, the dispute at issue falls within the scope of Article 24(4) of the Brussels Ia Regulation, such that the Swedish courts do not have jurisdiction to hear it.

It is against that decision as to lack of jurisdiction that IRnova brought an appeal before the referring court, the Svea Court of Appeal, Stockholm, Sweden.

According to that court, the dispute before it falls within the scope of the Brussels Ia Regulation, since it seeks a declaration of the existence of a legitimate right to an invention and is therefore civil and commercial in nature. However, that court is uncertain as to whether the Swedish courts have jurisdiction to hear a dispute seeking to establish the existence of the right to an invention arising from the alleged status of inventor or co-inventor. In its view, Article 24(4) of that regulation provides, ‘in proceedings concerned with the registration or validity of … patents’, for exclusive jurisdiction of the courts of the Member State in which the registration has been applied for or has taken place. That exclusive jurisdiction is justified by the fact, first, that those courts are best placed to hear cases in which a dispute concerns the validity of a patent or the existence of its deposit or registration and, second, that the grant of patents necessitates the involvement of the national administrative authorities, which indicates that the grant of a patent falls within the exercise of national sovereignty. However, while it is clear from the case-law of the Court that proceedings concerning exclusively the question of who is the holder of a patent right does not fall within that exclusive jurisdiction, that case-law does not provide any direct guidance as to the applicability of that Article 24(4) in this case.

In the present case, according to the referring court, the dispute before it can be considered to be linked to the registration or validity of the patent within the meaning of that provision. In order to identify the proprietor of the right to the inventions covered by the patent applications or by the patents at issue, it is necessary, according to that court, to determine the inventor of those inventions. Such an assessment would involve an interpretation of the patent claims and an analysis of the respective contribution of the various alleged inventors to the said inventions. Thus, the determination of the proprietor of the right to an invention could give rise to an assessment, in the light of substantive patent law, aimed at establishing which contribution to the development work resulted in the novelty or inventive step, and raise questions as to the scope of the protection conferred by the patent law of the country of registration. Furthermore, the fact that the patent applicant is not entitled to file a patent application constitutes a ground for invalidity.

In those circumstances, the Svea Court of Appeal, Stockholm decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

‘Is an action seeking a declaration of better entitlement to an invention, based on a claim of inventorship or co-inventorship according to national patent applications and patents registered in a non-Member State, covered by exclusive jurisdiction for the purposes of Article 24(4) of [the Brussels Ia Regulation]?’

The Court’s decision:

Article 24(4) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters,

must be interpreted as:

not applying to proceedings aimed at determining, in the context of an action based on alleged inventor or co-inventor status, whether a person is the proprietor of the right to inventions covered by patent applications deposited and by patents granted in third countries.

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Breaking news – the Unified Patent Court opens its doors

The UPC Preparatory team announced that the Unified Patent Court will open its doors on 01.04.2023. From that date, the Court will start to receive new cases.

As it is well-known the Unified Patent Court will supplement and strengthen the existing centralized European patent granting system. The idea behind the implementation of this new cross-EU court is to save money and time for patent owners when they try to enforce their rights in the EU. So far this was a challenge because patent enforcement has happened only on a national level in every single EU Member State. With the new supranational court, the EU tries to become more competitive for innovation owners and investors from around the world.

Brief IP news

1. New Guide: Cybercrimes and Trade Secret Protection in the EU & China. For more information here.

2. Anyway you see it: CJEU Advocate General issues Opinion on parts of designs ‘visible in normal use’. For more information here.

3. Global Innovation Index’s Global Science & Technology Clusters: East Asia Dominates Top Ranking. For more information here.

Interlocutory injunctions and patent protection – an EU Court decision

The European Court has ruled in the case C‑44/21 Phoenix Contact GmbH & Co. KG v HARTING Deutschland GmbH & Co. KG, Harting Electric GmbH & Co. KG, that has the following background:

On 5 March 2013, Phoenix Contact filed a patent application for a plug connector comprising a protective conductor bridge. In the proceedings prior to the grant of that patent, observations on the patentability of the product were submitted by Harting Electric.

On 26 November 2020, the patent applied for was granted to Phoenix Contact, inter alia for Germany.

On 14 December 2020, Phoenix Contact brought an application for interim relief before the referring court, seeking an injunction prohibiting HARTING Deutschland and Harting Electric from infringing the patent at issue.

The mention of the grant of that patent was published in the European Patent Bulletin on 23 December 2020.

On 15 January 2021, Harting Electric filed an opposition to that patent with the European Patent Office (EPO).

The referring court notes that it has reached the preliminary conclusion that the patent at issue is valid and that it is being infringed. It considers that the validity of that patent is not under threat.

However, that court states that it is prevented from ordering an interim measure on account of the binding case-law of the Higher Regional Court, Munich, Germany according to which, in order to issue an interlocutory injunction for patent infringement, it is not sufficient that the patent concerned has been granted by the granting authority, in this case the EPO, after a detailed examination of its patentability and that the question of the validity of that patent has also been reviewed by a court during the examination of the application for interim relief.

Thus, according to that case-law, for interim measures to be ordered, the patent concerned must also be the subject of an EPO decision in opposition or appeal proceedings, or of a decision of the Federal Patent Court, Germany in the context of invalidity proceedings, confirming that the patent concerned confers protection on the product in question.

Taking the view that such case-law is incompatible with EU law, in particular with Article 9(1) of Directive 2004/48, the referring court decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is it compatible with Article 9(1) of [Directive 2004/48] if German higher regional courts, which have jurisdiction at last instance in proceedings for interim relief, refuse, in principle, to grant interim measures for patent infringement if the validity of the patent in dispute has not been confirmed in opposition or invalidity proceedings at first instance?’

The Court’s decision:

Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.

What is a database for intellectual property rights?

A database for intellectual property rights represents an organised way of storing information for all IP assets that one company or individual owns. Such a database is important because it allows these assets to be managed properly and their protection to be maintained successfully.

The database can include different sections depending on the type of intellectual property. Typically it would give easy access to the relevant information and the necessary flexibility for better efficiency.

Intellectual property databases are absolutely essential for every company or individual that possesses such assets.

Through such a database the owner can look over all of its assets, can follow the relevant deadlines for work with Patent Offices and business partners, can keep an eye on the different terms related to these assets, can work easily with its IP attorneys and customers, etc.

Without an IP database, the risk of missing deadlines or for example a term for renewing IP protection can rise significantly. What’s more, the owner will not know what IP assets possess and can miss opportunities for profiting from them or even can lose money.

The database gives a clear view of what you have and at the same time provides you with an option to manage your assets in a more efficient way.

If we put potential flexibility to the database this by itself can not only organize your assets but can save you time and money in the long run.

There are several options for the creation of an IP database:

• A standard excel sheet — is probably the easiest way to build an intellectual property database. You can create a classic excel table where to fill in the whole information for your IP rights. The plus here is that this is a very easy way, however, there are several downsides. First of all the excel file doesn’t have reminders that can pop up or can be sent to your email. Even in case, there are some solutions for that you will need to put additional efforts in that regard. Another problem could be if you store this file locally on your computer you can lose it because of technical issues. And when the file becomes too heavy it can be troublesome to be managed.
• A paid specialised software — is definitely the best option, because such software is built with the purpose of managing IP assets. There are two main downsides, however. The first is that such software is expensive in most cases, which could be a challenge for individual IP owners, small or even mid-sized companies. The other issue could be that the software can be complex requiring some specialised knowledge and training which could prove costly.
• Adapted cloud-based applications — the third option is to use some cloud-based apps that, while not created specifically for database purposes, with some adjustments could be utilized to do the job. This is a good choice for individuals, freelancers, authors, and small- to mid-size companies and startups. In most cases, it doesn’t require a large budget and it can be used without serious training.

I’m finding this third option quite interesting and capable of doing the job. That’s why I created this a Udemy course in order to show you how to use one such free application, in this case, Asana, to create your own IP database which will serve you well for the purpose it is built for. I hope that you will like the course.

Now there is a promo code — 95% OFF — for the course, you can find it here

You can find a referral link to the course here too.

Patent attorney’s fees and legal expenses – an opinion by the Advocate General of the EU Court

The Advocate General of the European Court M. CAMPOS SÁNCHEZ-BORDONA has issued an opinion on the case C‑531/20 NovaText GmbH срещу Ruprecht-Karls-Universität Heidelberg.

This dispute has the following background:

The Ruprecht-Karls-Universität Heidelberg (‘the University’) brought an action before the (Regional Court, Mannheim, Germany against NovaText GmbH for an order that the latter cease and desist from the infringement of the University’s EU trade marks and acknowledge the University’s rights in relation to those marks.

The University’s legal representative noted in the application that assistance had been provided by a patent attorney.

The proceedings concluded when the parties reached a written settlement, pursuant to Paragraph 278(6) of the Law on civil procedure. On 23 May 2017, the first-instance court made the settlement order.

On the same date, the first-instance court set the value of the dispute at EUR 50 000 and ordered NovaText to pay the costs of the proceedings. The appeal brought by NovaText against that decision was dismissed.

By order of 8 December 2017, the first-instance court set the amount of costs to be reimbursed by NovaText to the University at EUR 10 528.95. Of that sum, EUR 4 867.70 were for the assistance of the patent attorney in the proceedings at first instance and EUR 325.46 were for that patent attorney’s work in the appeal proceedings against the order as to costs.

NovaText appealed to the Higher Regional Court, Karlsruhe, Germany, seeking the annulment of the decision as to costs in so far as it had been ordered to bear the costs relating to the involvement of the patent attorney.

The appeal court dismissed NovaText’s appeal on the following grounds:

–   Since the dispute relates to trade marks and signs, it is not possible under Paragraph 140(3) of the MarkenG to determine whether the patent attorney’s assistance was necessary for the purpose of obtaining the legal remedy sought or whether that patent attorney provided a service which ‘added value’ to that provided by the lawyer instructed by the University.

–  Paragraph 140(3) of the MarkenG cannot be interpreted in a manner consistent with Articles 3(1) and 14 of Directive 2004/48 in order to verify whether the involvement of the patent attorney was necessary.

–   That paragraph does not infringe the general principle of equality laid down in Paragraph 3(1) of the German Basic Law either.

An appeal on a point of law was lodged against the appellate decision before the Federal Court of Justice. After explaining the prevailing interpretation of Paragraph 140(3) of the MarkenG, that court deduces from the judgment in United Video Properties that that provision may be incompatible with Articles 3(1) and 14 of Directive 2004/48, in conjunction with recital 17 thereof.

In the referring court’s view, the automatic imposition on the unsuccessful party of the requirement to reimburse the cost of a patent attorney’s assistance, regardless of whether that assistance was necessary, creates difficulties on three levels:

–  First, the reimbursement of costs relating to the work of a patent attorney whose involvement is not necessary for the purposes of obtaining the legal remedy sought might be excessively costly, thereby infringing Article 3(1) of Directive 2004/48.

–  Second, the reimbursement of such costs might not be proportionate, within the meaning of Article 14 of Directive 2004/48, if the assistance provided by the patent attorney is not directly and closely linked to the action seeking to have a trade mark right upheld.

–  Third, Article 14 of Directive 2004/48 requires the court responsible for making the order as to costs to examine the specific circumstances of the case (judgment in United Video Properties, paragraph 23). Reimbursement of the patent attorney’s costs, regardless of whether or not the patent attorney’s involvement was necessary for the purpose of obtaining the legal remedy sought, does not take adequate account of the specific characteristics of the particular case.

Against that background, the Bundesgerichtshof (Federal Court of Justice) has referred the following question to the Court of Justice for a preliminary ruling:

‘Are Article 3(1) and Article 14 of Directive 2004/48/EC to be interpreted as precluding national legislation imposing an obligation on the unsuccessful party to reimburse the costs incurred by the successful party for assistance by a patent attorney in judicial proceedings concerning trade marks, whether or not the patent attorney’s assistance was necessary for the purpose of appropriate legal action?’

The Advocate General’s opinion:

‘Articles 3 and 14 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights are to be interpreted as precluding national legislation imposing an obligation on the unsuccessful party to reimburse the costs incurred by the successful party for assistance by a patent attorney in judicial proceedings concerning trademarks, whether or not the patent attorney’s assistance was necessary in order to obtain the legal remedy sought.’

Despite the pandemic intellectual property is on the rise for 2020

WIPO has published its annual World Intellectual Property Indicators Report for 2020.

Despite the pandemic and all accompanying economic problems, the data clearly shows that the interest in intellectual property rights is rising on a global basis.

According to the report, there is a 13,7% increase in trademark applications for 2020, a 1,6% increase in patents applications, 2% for designs, and 5,1% for plant varieties.

A number of patent applications:

Trademark applications trend 2006 – 2020:

Design application trend 2006 – 2020:

Design applications by country:

Source: WIPO.