Hands-on commentary on UPC decisions, key developments in IP law, and news from SONN.
The Central Division Milan rules on the procedural consequences of a parallel, final patent revocation by the Opposition Division of the European Patent Office. Since the patent was definitively and entirely (ex tunc)…
Read more →Aug 17, 2026
In these revocation proceedings, the Central Division Paris addresses the fundamental prohibition against extending the scope of protection to preserve legal certainty for third parties. Article 123(3) of the European…
Read more →Aug 7, 2026
In these revocation proceedings, the Central Division Munich addresses the precise requirements for the original disclosure of numerical ranges in composition claims. The patent in suit protects a method for processing…
Read more →In this procedural decision, the Court of Appeal addresses the legal interest in the revocation of dependent patent claims. A decision on whether the subject-matter of a dependent patent claim is not disclosed in a…
Read more →Jul 13, 2026
The party challenging the party had raised over 50 grounds for invalidity (12 based on claims exceeding the scope of the disclosure; 3 based on lack of novelty; 1 based on lack of industrial applicability; and 6…
Read more →Jun 29, 2026
The unconditional conversion of an independent counterclaim into a conditional counterclaim, which depends on the occurrence of an intra-procedural condition (a finding of patent infringement by the court), is a…
Read more →The defendant in a counterclaim for revocation of a patent is entitled to amend the patent, provided that the corresponding request is contained in the statement of defence (or at least filed in due time) and contains…
Read more →Jun 19, 2026
The defendant disputes the admissibility of a revocation action brought by the French subsidiary of a German company, while the parent company had already filed a counterclaim for revocation against the same patent in…
Read more →An order for recall, final removal from the channels of commerce and destruction is generally not considered for products that are only attacked by way of indirect patent infringement, as these are not "the…
Read more →The Mannheim Local Division dismissed the infringement action regarding the patent in suit because the plaintiff could not sufficiently demonstrate that the attacked embodiments implement the features of the patent. The…
Read more →If an application to amend the patent is filed, the plaintiff must file a reply to the application to amend (R 43.3 RoP). Where appropriate in view of the proposed amendments, the reply may contain alternative arguments…
Read more →On 5 August 2024, the claimant filed an action for patent infringement against a total of 14 defendants. The notice of the publication of the grant of the patent was published on 14 August 2024. On the same day, 14…
Read more →An objection under R 19 RoP can also be raised against a counterclaim for revocation. Article 33(2) UPCA is to be interpreted as meaning that this provision is not only applicable when an action is brought between the…
Read more →If a claimant files an action for revocation without the patent proprietor having given cause for the action, and the patent proprietor waives the patent immediately at the start of the proceedings, an exception may be…
Read more →Apr 8, 2025
If the grounds for revocation only affect part of the patent in suit, the patent is limited by the corresponding amendment of the claims and partially revoked. Even in revocation proceedings before the Unified Patent…
Read more →Mar 30, 2021
In a recent decision (133R138/19w), the Vienna Higher Regional Court deals with the correct application of the problem-solution approach in the assessment of inventive step. The starting point was a dispute between…
Read more →Feb 15, 2018
If, for the first time in the contested decision a document is cited which in view of the patent office anticipates the claimed subject without giving the applicant the opportunity to comment on it beforehand, the…
Read more →Austria has since decades a dual system for judging patent infringement like Germany: infringement itself is the realm of the Commercial Courts (or Penal Courts) while nullity of the underlying patent can only be stated…
Read more →The famous Austrian manufacturer of energy drinks Red Bull recently successfully enforced CTM 2534774, a trade mark consisting of blue and silver, whereas these two colours make up half of the mark each. Red Bull sued…
Read more →Ex Officio-Examination of Austrian Nullity Department after Withdrawal of Request for Nullification of a Patent in Appeal Proceedings In Austria, patents may be revoked by a request for revocation to the Nullity…
Read more →Mar 1, 2012
In a recent decision the Austrian Supreme Court had to decide on the professional liability of an attorney-at-law due to malpractice in a utility model infringement action. The claimant argued that due to miscounselling…
Read more →Memantine, a drug developed by Merz back in the 1960s, had been on the market in Germany even before September 1, 1976, when it was authorised on the basis of Article 3(7) of the AMG 1976 on the basis of transitional…
Read more →There are countries, e.g. the United States, where it is common to file a declaratory action with the courts solely based on the ground that the IP right of the defendant is invalid. This is not possible in Austria,…
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