BARDEHLE IP Experts

Since the UPC opened its doors about 6 months ago, ordering the inspection of premises and the preservation of evidence has been possible in that new system. This possibility also exists under German national law. But what differences are there between the UPC and the German national proceedings? How are the timelines for inspection orders different? To what extent do the costs vary?

Since AI-related inventions are more complex than regular CI inventions, more aspects have to be addressed and described in a corresponding invention disclosure report. What should you bear in mind regarding terminology? Why is a differentiation between the training phase and the trained model important? And which role does training data play? Listen to our latest episode, in which our patent atto...

One of the first decisions of the UPC was rendered by the Local Division of Duesseldorf on June 22, 2023, granting a preliminary injunction to Swiss pedelec manufacturer myStromer. In our latest episode, our attorney-at-law Dr. Michael Kobler will share the key takeaways from this decision: How quickly does the UPC grant PIs? What is the relevance of protective letters?

The development of the UPC is very exciting and still in its early stages. However, certain trends already seem to be robust. So, we have answers to these questions: How does the international panel of judges work? What should you prepare for the audio recorded oral hearings? Listen to our latest episode, in which our attorney-at-law Prof. Dr. Tilman Müller-Stoy shares our first-hand experience at...

The recent decisions G1/22 and G2/22 of the Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO) will be a game-changer, particularly in opposition proceedings. Which consequences will the "rebuttable presumption" of entitlement to priority have? What will change for applicants? What will opponents have to take into account from now on? In this episode, our Patent Attorneys Georg An...

It is a common scenario that a European patent application claims priority of an application that was first been filed in the Unites States. ❓Which aspects to bear in mind when drafting a U.S. application that might later be prosecuted in Europe? 💡In this episoce, our patent attorney Dr. Patrick Heckeler has tips based on his vast experience.

As collaborations between different companies are increasingly common, the number of joint inventions increases as well. However, a number of legal issues and questions arise when an invention is made by more than one company. Who is allowed to use the invention? What about compensation for co-owners? What can be stipulated between the co-owners and what is the current stance of German statutory a...

With the start of the UPC, the file wrapper estoppel became highly relevant, because some UPC member states do recognize the file wrapper estoppel in their legal systems, while others do not. What exactly is the file wrapper estoppel? For which cases is it most relevant? How do the different countries of the Unified Patent Court handle the file wrapper estoppel? In this episode, our attorneys-at-l...

Patent rights are territorial, i.e., they only apply in the countries where you've obtained legal protection. How to choose the right countries for patent protection? In our latest episode patent attorney Preston Richard, LL.M. explains how to factor in your overall business strategy, market research, and IP enforcement mechanisms of national systems.

AI such as Dall-E or ChatGPT has quickly become part of the every-day lives of many of us. Are AI-based creations eligible for copyright protection? Which stance does European and U.S. copyright law take in this context? Which role do definitions and instructions play? In our latest episode, our attorneys-at-law Dr. Philipe Kutschke and Dr. Jan Lersch answer these and other questions for you.

Alternative dispute resolution (ADR) is gaining momentum and has become a hot topic in the patent field. Which advantages does it offer as compared to traditional court proceedings? What should you bear in mind when conducting mediation or arbitration? In our latest episode, our attorney-at-law Pascal Böhner discusses these questions and gives tips regarding ADR.

After the release of the European Commission's amended official draft of the Regulation on Standard Essential Patents, there has been controversial discussion about it in the SEP community. What are the key elements of this draft? Why have they caused controversy? How reasonable do the envisioned procedures for FRAND determination seem? And to which extent does the SEP Regulation reflect the reali...

Prior rights are an exception to the general principle that documents published after the filing date of a patent (application) are not prior art. What qualifies as a prior right? To which jurisdictions to national prior rights apply in case of European bundle patents and/or European patents with unitary effect? In our latest episode, our patent attorney Dr. Johannes Möller discusses these questio...

The Hague Filings via WIPO are an effective way to obtain international protection for the appearance of your product. How many countries are covered and how high is the degree of international harmonization? Which prominent national particularities still need to be taken into consideration? In our latest episode, our attorney-at-law Dr. Philipe Kutschke discusses these questions regarding interna...

Now that the Unified Patent Court is operational, it is high time to ponder efficient defense strategies. In this episode, we explore the prior use right (Article 28 of the UPC Agreement). Which impact does the dynamic reference to applicable national provisions have? Which overarching prerequisites do defendants need to fulfill to claim the prior use right before the UPC? What are the legal effec...

There is a variety of measures to protect trade secrets in UPC proceedings. How can parties exclude confidential pieces of information from public access? What are differences to the protection of trade secrets in German patent litigation proceedings? In this episode, our attorney-at-law Dr. Ronja Schregle discusses these questions regarding trade secret protection.

As the start of the Unified Patent Court draws ever closer, this week, we share our expectations regarding the German local divisions. Will German local divisions play an important role within the UPC and why? Which conclusions might patentees draw from the composition of the four local divisions? In this episode, our attorneys.at-law Dr. Jan Bösing and Dr. Stefan Lieck answer these and other ques...

This episode of our podcast BARDEHLE IP Experts discusses the award of damages before the UPC: https://bardehle-ip-experts.podigee.io/52-ip-insights-the-composition-of-divisions-at-the-upc Which alternatives will UPC judges have to award damages? Why does the substantiation of each alternative play a vital role for the plaintiff? In this episode, our attorney-at-law Dr. Ronja Schregle and patent a...

When deciding for or against a Unitary Patent, you should take various factors into consideration, for instance: In which European countries did you validate your patents in the past? How flexible should the geographic scope of protection be? Does the option of enforcement at the UPC make certain countries more attractive? In this episode, our patent attorney Dr. Georg Anetsberger discusses these...

On the occasion of the 2023 World IP Day, our partner and attorney-at-law Dr. Tilman Müller and our attorney-at-law Anita Peter spoke to Jane Bu, Senior Director Legal at Via Licensing. They discussed the impact of diversity, accessibility, and inclusion on the field of #IntellectualProperty, Jane Bu’s personal experience during career, and some of her advice for #WomeninIP. Happy World IP Day eve...

💡With the Unified Patent Court opening its doors on June 1 and the expected leverage of UPC injunctions, it is high time to ponder efficient defense strategies. ❓Which approach is the UPC expected to take regarding ex-parte preliminary injunctions? ❓What is an "opt-out torpedo" and how to deal with it? ❓Which role will declaratory judgment actions play? In this episode, our attorneys-at-law Pr...

Recent developments of the World Wide Web have created the futuristic vision of the metaverse. What exactly is the metaverse? Which impact does it have on claim drafting? And what might litigation regarding infringements in the metaverse look like? In this episode of our podcast, our patent attorney Tobias Kaufmann and our attorney-at-law Nadine Westermeyer answer these and other questions regardi...

The sunrise period of the #UnifiedPatentCourt has started, so it is high time to get familiar with all aspects of the new system. ❓How patentee friendly will the UPC be in terms of injunctive relief? ❓Which criteria will the Court apply when making use of its discretion of granting injunctions? ❓And which role will the proportionality test play? 💡In our latest episode, our attorney-at-law Anit...

As #StandardEssentialPatents are increasingly litigated in more and more sectors, e.g. the telecommunications, automotive, and IoT industry, we summarize the current SEP and FRAND landscape in Germany and speak about expectations regarding the #UnifiedPatentCourt in this regard. ❓How does the case law of the individual German courts differ from each other? ❓What has the German Federal Court of J...

Many people are eagerly awaiting the decision of the EPO’s Enlarged Board of Appeal in case G 2/21 on plausibility, which should be rendered in the coming months. But in which contexts is “plausibility” actually relevant for patentability? How are enablement and plausibility connected? And which role does plausibility play for inventive step? In this episode, our patent attorney Dr. Axel Berger an...