HOFFMANN EITLE Quarterly Newsletter 6/22
Publication | 23.06.2022
Dear Colleagues and Friends,
In this year's second issue of the Hoffmann Eitle Quarterly, we begin a series of articles on artificial intelligence (AI) and machine learning (ML) at the EPO. The second article explores the benefits, possibilities and risks of patent and design marking. This is followed by an article reporting on two decisions of the CJEU on the examination of word marks on absolute grounds, and by an article on the captivating topic of IP rights and especially trademarks in the metaverse, a rapidly growing virtual market place. We then look at the risks of invalid opt-out applications filed with the UPC before concluding with an article on the CJEU's decision C-44/21 on the requirements for obtaining provisional injunctions.
We hope that you will enjoy this issue of the Hoffmann Eitle Quarterly, and as usual, we very much welcome your comments.
Nicolas Douxchamps
Editor-in-chief of the Hoffmann Eitle Quarterly
Ir. (Electrical Engineering)
Partner - Belgian and European Patent Attorney
HE Electrical Engineering & IT Practice Group
Hoffmann Eitle Quarterly
Driven by Technology: Patenting AI Before the European Patent Office (Part I)
This contribution, the first of a series of articles on AI solutions, is an introduction to how the EPO treats software inventions, or computer-implemented inventions (CII) in the office terminology, as well as how artificial intelligence and machine learning are generally framed in the CII case law.
Link to the article
Marking Your IP Territory
IP legal frameworks often fail to mention IP marking for patents and designs, or instead include provisions with an accompanied uncertainty originating from a lack of established case law. Where such provisions explicitly exist, IP marking may be of strategic benefit if its execution can successfully navigate the often-strict criminal provisions against unfair marking practices. Virtual marking may provide several advantages over traditional patent marking.
Link to the article
Will the EUIPO Lower Its Threshold for Assessing Word Marks on Absolute Grounds?
In the past few years, it appeared that the EUIPO's examination of word marks on absolute grounds has been continuously strict. Last year, however, the General Court of the Court of Justice of the European Union handed down two decisions that provide hope for a somewhat more liberal approach by the EUIPO.
Link to the article
Trademarks in the "Metaverse"
The new "metaverse" market is rapidly growing, thanks to the "non-fungible tokens" (NFTs) that make it possible to sell any good in digital format. The sales opportunities offered by the metaverse inevitably expose IP rights holders to new risks, and it therefore becomes necessary to develop defensive strategies.
Link to the article
Opting Out but Staying In - The Risk of Ineffective Opt-Outs From the UPC
After several setbacks and delays, the Unified Patent Court ("UPC") is finally expected to start its operations in the last quarter of 2022 or early 2023. The UPC will enable patentees to enforce their existing patents with one decision covering all UPC member states for which the European patent has effect, but it will also allow for a central attack on that patent's validity. For a transitional period of (at least) seven years, the UPC will share jurisdiction for existing or future nationally validated European patents with the respective national courts of the UPC Member State, unless the patent proprietor opts out of the jurisdiction of the UPC in its entirety. An opt-out will only take effect if recorded in the register kept by the UPC Registry, with the caveat that an application for an opt-out is no longer possible once an action has been brought before the UPC. A three-month "sunrise period" offers patentees a head start to opt out their patents before the UPC opens its doors...
Link to the article
The ECJ Rules on the Requirement of Validity of the Asserted Patent in Provisional Injunction Proceedings
The ECJ held that it would violate European Union law if preliminary injunctions (PI) in patent litigation were generally refused unless the validity of the patent-in-suit has previously been confirmed in validity proceedings, at the least at first-instance.
Link to the article
Should you have any questions or need more information, please do not hesitate to contact us.
With best regards,
HOFFMANN EITLE