Key takeaways
Rebuttable presumption that the person registered as the patent proprietor is entitled to be registered pursuant to R. 8.5 (c) RoP
If in the case of a European patent a person is registered as the patent proprietor in the respective national register, there is a rebuttable presumption that the person recorded in the respective national register is entitled to be registered (R. 8.5(c) RoP). The result of such a legal presumption is to reverse the burden of presentation and proof with regard to the presumed fact. If the Applicant can refer to his listing in the registers relevant to the respective dispute, it is up to the Defendant’s side to set out and, if necessary, prove that the Applicant is not entitled to be registered. (Headnote 1)
Stated purposes contained in a patent claim have the indirect effect of defining the subject matter protected by the patent
If a patent claim contains stated purposes, these usually serve to improve the understanding of the invention. As a rule, they have the indirect effect of defining the subject matter protected by the patent in such a way that it must not only fulfil the spatial-physical features, but must also be designed to be usable for the purpose stated in the patent claim. (Headnote 2)
Statements made by the Applicant in the granting procedure are no admissible material for interpretation
Statements made by the Applicant in the granting procedure are not admissible material for interpretation. They are therefore generally not to be taken into account in the context of patent interpretation (UPC_CFI_452/2023 (LD Düsseldorf), Order of 9 April 2023, headnote 1, GRUR-RS 2024, 7207). Art. 24(1)(c) UPCA in conjunction with Art. 69 EPC conclusively determine which documents are to be used for interpreting the patent claims determining the protective scope, namely the patent description and the patent drawings. Since the grant file is not mentioned in Art. 69 EPC, it does not by law constitute admissible material for interpretation (see also Kühnen, Handbuch der Patentverletzung, 16th ed., Section A, para. 114; Benkard/Scharen, EPÜ Art. 69, para. 32 with further references). If the applicant has commented on the meaning of a feature or term during the examination procedure, this may at best be indicative of how a person skilled in the art would understand the relevant feature.
Patent proprietor is not under a general obligation to observe the market in respect to the urgency of an action pursuant to R. 209.2 (b) RoP
If the Applicant lacks positive knowledge of an infringement of property rights, grossly negligent ignorance or wilful blindness to an infringement of intellectual property rights is considered equivalent to such knowledge. The patent proprietor is not under a general obligation to observe the market. However, as soon as the holder of a property right becomes aware of specific circumstances that suggest an infringement of his property right, he is expected to take all measures readily available to him and to further clarify the circumstances. It is up to the Defendant to explain such circumstances triggering a duty to provide information. (Headnote 3)
An order for security for costs cannot be granted in proceedings addressing an application for provisional measures
While Art. 69(4) EPC only provides for the provision of security for costs by the claimant, R. 158 RoP extends the group of addressees of such an Order to include “the Parties” and thus also the defendant in the main action.
In proceedings addressing an application for provisional measures, there is neither scope nor (with regard to R. 211.1(d) RoP) a need for the (analogous) application of R. 158 RoP, given the urgent nature of such proceedings. (Headnote 4)
Division
Local Division Duesseldorf
UPC number
UPC_CFI_463/2023
Type of proceedings
Application for provisional measures
Parties
10x Genomics, Inc. (Claimant)
Curio Bioscience Inc. (Defendant)
Patent(s)
EP2697391B1
Body of legislation / Rules
Rules 8.5 (c), 158, 209.2 (b) RoP, Art. 69(4) UPCA
