SONN Patentanwälte – IP Attorneys

EPO: Flexibility in Delimiting Two-Part Claims

When drafting patent claims in two-part form, the question of correct delimitation regularly arises. According to Rule 43(1) EPC, the delimitation must be made against the state of the art. However, this does not mean that the delimitation must necessarily be made against the closest state of the...

Claim construction, Interpretation, Clarity, Amendments, Scope of protection, EPC, Opposition

Proper claim construction is essential for a correct assessment of patent claims. A claim construction that disregards a technically meaningful claim feature is not a good-faith interpretation. Rather, the skilled person, approaching the claim with a mind willing to understand, gives each claim feature...

State of the art, Inventive step, Enlarged Board of Appeal, Reproducibility and sufficiency of disclosure, EPC

In this decision, the Board of Appeal addresses the implications of the landmark decision G 1/23 of the Enlarged Board of Appeal. The Enlarged Board's decision does not exclude the selection of a product that is commercially available but not reproducible by third parties as the closest state of...

EPO: The Concept of 'Photographic' Novelty in Patent Claims

A single technical feature not disclosed in the state of the art is sufficient to confer novelty on a claim, regardless of its technical effect. In this assessment, the concept of 'photographic' novelty applies, so to speak. The technical effect of a feature is only relevant when assessing inventive...

UPC Local Division: Substantive Decision: Interpretation, Acts of Use, Injunction Order

A process claim drafted as a further independent claim and the corresponding description can only be relevant for determining the scope of protection of an independent product claim to the extent that there are indications in the patent specification that this also describes properties of the claimed...

UPC Local Division: Substantive Decision: Dismissal of Infringement Action for Lack of Substantiation, Conditional Counterclaim

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 dispute centered on the interpretation of the function of the "broker" (feature...

UPC Court of Appeal: Problem-Solution Approach for assessing inventive step

The approach taken by the Unified Patent Court when establishing inventive step under Art 56 EPC is as follows:

• It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the person skilled in the art, with...

UPC Local Division: Substantive Decision: Requirements for Direct Patent Infringement

If a product consists of different components, the allegedly infringing product must comprise each claimed component. Cases in which only certain features of a product are realised may be examples of indirect infringement under Art 26 UPCA, but not of direct infringement under Art 25 UPCA (LD...

UPC Court of Appeal: Procedural Decision: Withdrawal of Appeal, Court Fees

R 370.9 lit b RoP was amended with effect from 1 January 2026 and now provides for a refund of court fees of 50% if an action is withdrawn before the conclusion of the written procedure, instead of the previous 60%. The new rule only applies to such actions and applications filed after 31 December...

UPC Court of Appeal: Procedural Decision: Change of the Language of Proceedings

The fact that (most) parties are not resident in countries where the language of proceedings chosen by the plaintiff is an official language is an important factor when deciding on a request to change the language of proceedings to the language in which the patent was granted. When deciding on the...