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.

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.

Brief IP news

  1. Who’s IP is it? The AI Inventor or the AI’s Inventor? For more information here.     
  2. Building High-Quality Patent Portfolios in the United States and Europe: Part III – Examiner Interviews. For more information here.  
  3. High-growth technology business forum – Licensing, 30 September 2021. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here.

Sonos won a lawsuit against Google for key patented technologies

The US audio devices producer Sonos won a patent dispute against Google in the US.

The case concerns an accusation by Sonos that Google has used without authorization patented technologies for W-Lan connectivity and synchronization of audio playback. The concerned patents are:

  • 9,195,258 (“System and method for synchronizing operations among a plurality of independently clocked digital data processing devices”)
  • 10,209, 953 (“Playback device with synchronisation of a plurality of devices”)
  • 9,219,959 (“Multi-channel pairing in a media system”)
  • 8,588,949 (“Method and apparatus for adjusting volume levels in a multi-zone system”)
  • 10,439,896 (“Connection to a playback device”).

The technologies described in these patents have been used for different Google’s devices such as Pixel smartphones, voice assistant devices etc.

As it is well-known both companies worked together in 2013 when Sonos integrated some of the Google services in its devices. According to the accusation after that, however, Google used some of the information to develop its own products.

Based on this decision the US International Trade Commission can prohibit the import of any goods into the US that violate the Sonos’ patents. This could be a problem for Google because most of its deceives are produced in Asia.

The Court’s decision is not final and can be appealed.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

5 key steps for intellectual property management for SME

In times of economic crisis the things that can differentiate one company could be critical for its market success.

Some parts of this differentiation can be based on intellectual property rights such as trademarks, patents, industrial designs, copyrights, domain names etc.

One important moment in that regard is how these rights are managed in order to provide the company owner with the necessary economic benefits.

This is essential because in the case of poor management the consequences for the market position of the company could be quite negative.

All big companies have organisations and policies on how to deal with the management of their intellectual property portfolios.

In the case of small and mid-size companies this is not possible all the time because it requires human and financial resources.

Nevertheless there are some things that can be done which will help SME do preserve the value of their intellectual property:

  1. Make an audit of everything that can represent the intellectual property in the company – the main goal is to discover what the company has. For example some products can be sold under a brand name which is not protected as a trademark. Another example is for key technology that is not protected by a patent or trade secret.
  2. Evaluate the information from the audit and identify the key value of intellectual property within the company.
  3. Proceed with receiving the necessary protection for those of the assets that can be registered with the Patent Office as trademarks, industrial designs, patents etc.
  4. Create a database for your intellectual property portfolio in order to manage it properly and to keep yourself on date with its status.
  5. Go over the portfolio and identify the possibilities for licensing your intellectual property to other companies. This can be an additional revenue stream for your company.

In case you are a small business and you want to build a database of intellectual property, you can learn how to do that almost for free through this Udemy course: A complete guide on how to build an IP database using Asana

How to create a database using Asana?

Most people and companies that own intellectual property rights such as trademarks, patents, copyrights etc., come to a conclusion that after receiving the relevant protection the job is done and everything will be fine for those rights.

Not only this is not the case, it could be a huge mistake.

When you own or make business with intellectual property you need to be proactive and to maintain it constantly otherwise you can lose this protection.

For example, if you have a patent for invention in order to keep its protection active, you need to pay annual fees to the Patent Office.

In the case of trademarks, for every 10 years, in most of the cases, you need to renew the trademark otherwise you will lose its protection.

All of this requires a good knowledge and information for the status of every IP asset that you possess.

Big companies use professional software that keeps all of the intellectual property information at one place which allows companies to maintain the relevant protection and to keep up with all legal requirements.

For individual owner and small businesses, however, such a software could be way too expensive.

That’s way I decided to create a Udemy course that teaches you how to build your all database with intellectual property information for free, just using one very well-known application called Asana.

The database that I created in the course, although not so sophisticated as a professional software decision, it can do the job quite properly.

This can save you a lot of time, money and problems when it comes to maintaining the protection of your intellectual property right.

If you are interested you can check the “A complete guide on how to build an IP database using Asana“.