Patents in Europe: Helping business compete in the global economy 2019/2020

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Patent prosecution, management and enforcement in Europe; includes country-by-country guides to litigation.

Introduction

How do you build an effective IP office in a changing patent landscape?

European Patent Office
Thomas Edison once said that “vision without execution is hallucination”. That is quite a warning for any organisation assessing its next steps, let alone for one of the world’s largest IP offices developing its next multi-annual workplan.

Europe focus

Securing software patents through the EPO

Botti & Ferrari Srl
For granting European patents, the EPO is bound by the provisions of the European Patent Convention (established in 1973 and revised in 2000).

The need-to-know facts about patent term extensions in Europe

COHAUSZ & FLORACK
Patent term extensions via SPCs play a key role in the protection of drugs and plant protection products in Europe. Understanding their complex legal framework is just as crucial.

Standard-essential patents and FRAND licensing in Europe

Eisenführ Speiser
In July 2015 the ECJ issued its judgment in Huawei v ZTE. This judgment has set out an antitrust law framework within which SEPs can be enforced. The criteria laid down by the ECJ have been specified and elaborated in greater detail by the various judgments handed down in such cases.  

Artificial intelligence: the implications for patents

Kuhnen & Wacker
AI is one of the dominant topics of our time, although it has been around for quite a while. The term was initially coined by John McCarthy, an American computer scientist, at a conference in 1956, who said that “AI is the science and engineering of making intelligent machines”.

Pitfalls in opposition

NLO
A third-party opposition at the EPO is one of the worst things that can happen to a patentee who has just invested significant resources validating its European patent.

Patentability trends across EPO examining divisions and boards of appeal

ZBM Patents & Trademarks
One of the main changes at the EPO under Benoît Battistelli’s presidency was the early certainty initiative in respect of examination and opposition. The object of this programme was to eliminate the EPO’s historical backlog of pending applications by the end of 2020 and to streamline the prosecution of European patents and oppositions.

Country Q&As

Litigation and eligibility: Austria

Wildhack & Jellinek Patentanwälte
In civil matters, actions and requests for interim injunctions based on alleged infringements may be brought exclusively before the Vienna Commercial Court. In Austria, preliminary proceedings are a frequently used tool, as they are fast, effective and comparatively low cost.

Litigation and eligibility: Germany

COHAUSZ & FLORACK
About 1,000 infringement actions on the merits are filed before a German venue every year. Where infringement is found, an injunction is granted by law. As well as a verdict based on an infringement action on the merits – which usually takes between six and 18 months to be issued – a preliminary injunction can be declared by the courts in as little as 24 hours.

Litigation and eligibility: Greece

Dr Helen G Papaconstantinou and Partners Law Firm
The first and quickest way of acting against an infringer is to request a temporary restraining order. This will be granted if the petitioner proves the existence of a prima facie serious infringement as a matter of exceptional urgency. Such request is filed concurrently with a petition for injunction and, if granted, is usually effective until the hearing of the injunction takes place.

Litigation and eligibility: Hungary

Danubia Patent & Law Office LLC
A patent owner may enforce its rights by filing a civil lawsuit or a request for preliminary injunction. Depending on the circumstances, patent rights may also be enforced in the event of a direct threat of infringement, that is before an infringing product is launched on the Hungarian market; however, court practice is quite strict in this regard. Criminal law penalties as well as customs measures in line with EU Regulation 608/2013 are also available.

Litigation and eligibility: Italy

GLP Intellectual Property Office
Patent owners in Italy may file a lawsuit against an alleged counterfeiter and begin proceedings on the substance of the case. If certain requirements are satisfied, the patent owner may also file a provisional remedy in order to seek a faster decision by a judge. In some cases, the decision reached in the petition must be confirmed by a subsequent main proceeding.

Litigation and eligibility: Portugal

Patentree, Lda
In Portugal, both administrative and judicial actions are available to patent owners, although most patent infringement cases are dealt with through civil suits. Customs intervention can also be availed of in order to prevent the import of infringing goods. A complaint may be lodged with the competent administrative authorities or the Public Prosecutor’s Office.

Litigation and eligibility: Serbia

Popović Popović & Partners
The owner of a patent or its exclusive licensee is entitled to commence civil proceedings against any person infringing its right to the patent. The complaint is most effective if a provisional injunction prohibiting further infringing actions is obtained during the litigation procedure.

Litigation and eligibility: Sweden

Fenix Legal KB
The normal first step is to send a cease and desist letter, including compensation claims for the infringement. In fact, most infringements are stopped and solved this way. However, if this is insufficient, the next step is to bring the case to the Patent and Market Court. Border measures are also available.

Litigation and eligibility: Switzerland

Nater Dallafior Rechtsanwälte AG
According to Swiss law, if a patent is being infringed the patent owner is entitled to stop activities such as the advertising, selling or manufacturing, the exporting or importing of infringing goods. In addition, such goods can be seized and destroyed. Moreover, the patent owner is entitled to financial compensation.

Litigation and eligibility: Turkey

Gün + Partners
Article 149 of the Industrial Property Code 6769 (IP Code) sets the legal framework for claims that can be asserted by the rights holder and the scope of the injunctions that can be granted by the court.

Litigation and eligibility: United Kingdom

D Young & Co LLP
The United Kingdom is split into three jurisdictions, all of which have courts which can determine patent infringement claims. Of these jurisdictions, the majority of patent claims are commenced in England and Wales, which consists of the Patents Court and the Intellectual Property Enterprise Court.