Category: Patent

Patent related topics (including UPC, EP and DE practice)

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G 1/24 – claim interpretation

On 18 June 2025, the Enlarged Board of Appeal (EBA) rendered its decision on claim interpretation in EPO proceedings in matter G 1/24 . The EBA held that (headnote of the decision): “The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.” Thus, claim interpretation in proceedings before the EPO is based on the same principles as in infringement proceedings. Prior to G 1/24, some Boards of Appeal took the position that the description and drawings are to be consulted for claim interpretation only in case the claims were unclear or ambiguous.

Many useful and valuable resources on G 1/24 are already available online, such as:

While the headnote of G 1/24 stipulates that the description is to be taken into consideration for claim interpretation in proceedings before the EPO, this does not mean that clarity issues in the claims can be resolved by simply referring to the description. Point 20 of G 1/24 highlights “… the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The correct response to any unclarity in a claim is amendment.”

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Appeal proceedings with intervener

In proceedings before the EPO, the question of whether appeal proceedings may be continued, after withdrawal of the sole appeal, with a party who intervened at the appeal stage has been settled for a long time. The Enlarged Board of Appeals (EBA) held in decision G 3/04: “After withdrawal of the sole appeal, the proceedings may not be continued with a third party who intervened during the appeal proceedings.”

In T 1286/23, the Board brings this question before the Enlarged Board of Appeals again. As stated in r. 3.7 of the decision, “[the] referring Board is … not in agreement that Article 105 EPC in combination with Article 107 EPC must be read in the sense that also a third party intervening only at the appeal stage can never become more than a non-appealing opponent.” The referring Board provides detailed reasons for this position in r. 3.7 et seq. of the decision.

Thus, the procedural question pertaining to a party who intervened at the appeal stage is going to be revisited.

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GPTO and WIPO DAS

The participation of the German Patent and Trademark Office (GPTO) as a depositing office in the WIPO Digital Access Service (DAS) offers significant advantages for patent applicants. While the GPTO requires that a dedicated request be filed for entering a document into WIPO DAS, the GPTO allows for the deposit of priority documents even when the priority term has (long) expired and for documents that pre-date the GPTO’s designation as a depositing office. This flexibility is particularly beneficial when applicants require access to priority documents after the expiration of the priority term, such as during the filing of a bypass continuation in the U.S.

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Furnishing Priority Document for a PCT Application

There are instances where the WIPO Digital Access Service (DAS) access code may not be available at the time of filing a PCT application. A typical example is when the depositing office has not yet deposited the priority document into WIPO DAS upon expiry of the priority term.

The WIPO DAS access code is essential for retrieving priority documents electronically from WIPO DAS. Fortunately, the WIPO has instituted a user-friendly solution through the ePCT system. ePCT allows the eOwner to initiate the retrieval of the priority document by performing the action “Obtain priority document from DAS” to effect retrieval of the priority document within the time period of R. 17.1(b-bis). The eOwner can simply log into their ePCT account and initiate the retrieval of the priority document.

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UPC updates

The epi’s podcast episode INSIGHT epi UPC Case Law – Episode 3 provides interesting updates on UPC-related developments. The following aspects were particularly interesting to me:

First, as highlighted by one of the presenters (who reported on his first-hand experience when filing a request for file inspection with the Nordic-Baltic RD), the jurisprudence of the divisions appears to be influenced by the judge’s national legal background. This might be one of the reasons as to why the first file inspection request with the Nordic-Baltic RD was more successful than the two concurrently pending file inspection requests that were filed by others with the CD Munich.

Second, the CMS appears to be structured such that it cannot cope with some procedural situations. With regard to file inspections, CMS did not appear to work properly for patentee’s appeal against the RD’s decision to grant access to (a redacted version of) the pleadings.

As always, I can only recommend listening to this episode of INSIGHT epi.

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First UPC litigation ranking by JUVE Patent

Many law firms and (potential) litigants eagerly awaited the first UPC litigation ranking recently published by JUVE Patent.

The ranking of December 2024 has revealed a surprising trend: some of the top patent law firms, renowned for their national prosecution and litigation work, are not to be found in the UPC ranking. This includes firms that have played a pro-active role in the preparation of the new system (such as BOEHMERT & BOEHMERT with Prof. Goddar) and firms that are ranked in the top tier for national litigation (such as df-mp).

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Eletronic filings with the GPTO

As widely communicated by the EPO, the EPO smart card will be faded out for the EPO’s online services.

Practitioners who use the EPO smart card for the GPTO’s online services (in accordance with §3(2) numeral 2 of the Regulation for Electronic Filing with the GPTO) should be aware that the EPO smart card can no longer be used for signing in DPMADirektPro after December 31, 2024 (see GPTO information on digital signatures). This applies irrespective of the expiry date indicated on the EPO smart card. The 2FA, which the EPO has successfully introduced as new authentication mechanism, will not be available for procedural acts in the GPTO’s filing software DPMADirektPro.

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GPTO becomes WIPO DAS depositing office

The German Patent and Trademark Office (GPTO) started acting as depositing office for WIPO DAS effective 25 November 2024. Additional information can be found in the official notice from the president and on the WIPO DAS country website.

Two notes for practitioners: First, as of now, only patent and utility model applications will be deposited by the GPTO in WIPO DAS. Hopefully this will be extended to design and trademark applications later. Second, the process for requesting deposition in WIPO DAS is different from, e.g., the process known to European practitioners from EPO and EUIPO priority applications: For priority applications filed with the GPTO, it is required to file a separate request using Form A9164 after the application has been filed. Please find a link to the version of Form A9164 available as of writing this blog contribution .

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EPO seminars

As the year draws to a close, the EPO is going to host several interesting seminars, including:

Opposition Matters 2024: According to the EPO, “Opposition Matters is the EPO’s key event for professional users to keep abreast of the latest and most relevant developments in opposition proceedings.”

Litigation Matters 2024: According to the EPO, “Litigation Matters … is devoted to the latest practices of patent litigation in Europe, with particular attention to the UPC litigation.”

Registration is already open. These events represent a great opportunity to catch up with recent developments. Both events are free of charge and organized by the EPO Academy.