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FRAND-defense under Article 102 TFEU in the aftermath of the General Advocate’s opinion

On 26 March 2015 the Landgericht Düsseldorf rendered a judgment granting an injunction based on the finding of infringement of an SEP by sales of smartphones implementing NFC – Near Field Communication according to an ETSI standard (France Brevet vs. HTC – Landgericht Düsseldorf 4b O 140/13). Defendant’s FRAND-defense was rejected by the Court because Defendant had failed to sufficiently substantiate facts establishing Plaintiff’s dominant position within the internal market according to Article 102 TFEU.

In essence the Landgericht followed the opinion of General Advocate Melchior Wathelet (Opinion delivered on 20 November 2014 in Case C-170/13) that the ownership of an SEP as such do [...]

Doctrine of equivalence: most recent decision

The German Bundesgerichtshof has issued a decision (X ZR 41/13) called “Quetiapin” which discusses a fundamental question of the Patent Law, i.e. the definition of the “technical problem” underlying an invention. The claim of the European Patent under discussion concerned a sustained release formulation. The Patent Court had nullified the (German part of the) patent and the Bundesgerichtshof has rejected the appeal which the patent owner had filed against the first instance Patent Court’s decision. The Bundesgerichtshof took the opportunity of this case to address the definition of the technical problem. The court admonishes that not necessarily one has to look to the “object” [...]

Will the “Inescapable Trap” of Article 123 (2) and (3) EPC Catch German Parts of European Patents?

by Dr. Simon Klopschinski

Under EPO case law there is the “inescapable trap” of Article 123 (2) and (3) EPC. The German Federal Court of Justice decided in the “Winkelmesseinrichtung” case that the “inescapable trap” does not apply to German national patents. In recent time different nullity boards of the German Federal Patent Court have issued conflicting decisions on the question of whether the Federal Court of Justice’s reasoning in “Winkelmesseinrichtung” also applies to German parts of European patents.

Under EPO case law a European patent has to be revoked when its claims contain a feature which is not disclosed in the original application (Article 123 (2) EPC) and th [...]

15 years are enough! ECJ decided on the maximum period of exclusivity of a patent and SPC

by Miriam Büttner

In a recent decision the European Court of Justice (ECJ) ruled on the maximum period of exclusivity of a patent and a supplementary protection certificate (SPC) (Order of the Court dated 13 February 2014 – case no C-555/13, Merck Canada Inc. vs. Accord Healthcare Ltd and others).


Merck Canada Inc. (Merck) lodged an application for a patent for the active ingredient “montelukast sodium” in Portugal on 11 October 1991, which was granted on 2 Octo-ber 1998. The first marketing authorization (MA) for a medicinal product containing that active ingredient within the European Union was obtained in Finland on 25 Au-gust 1997. Merck applied for a SPC with the Port [...]

Punitive damages in Europe? The ECJ will have a word on it!

The newly established 15th Patent Senate of the Appeals Court of Düsseldorf (Presiding Judge Dr. Ulrike Voß) has referred a number of questions concerning the calculation of damages in IP cases to the European Court of Justice. This opens the floor for the ECJ to talk about damages, as far as I know for the first time in IP matters.

In the case which now has been referred to the ECJ plaintiff had already successfully sued defendant for infringement of its plant variety protection right and now tried to collect damages for the past infringement on the basis of a reasonable royalty. In calculating the damages on this basis, plaintiff requested to take into account several factors which he [...]

German Courts Differ on the IP Infringing Character of the Presentation of a Product at an International Trade Fair

Dr. Simon Klopschinski

In recent time the trademark, copyright and competition law senate (1st senate) of the Federal Court of Justice (FCJ) and one of the patent senates of the Düsseldorf Higher Regional Court have issued conflicting decisions on the question of whether the presentation of a product at a trade fair in Germany constitutes an IP infringing offer.

Under German law the exclusive right of the patentee includes the act of offering a product which uses the patented invention. The meaning of offering is very broad since it does not only cover offers within the meaning of contract law but all acts which from an objective point of view make a patent infringing item available for pur [...]

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