IP Quick Tip: Period of limitation under the UPC Agreement

01/25/23 • 3 min

Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special

Welcome to today’s IP Quick Tip on the period of limitation under the Agreement on a Unified Patent Court and possible interpretations of the new legal framework.

Let us have a brief look at Article 72 UPCA:

First, the provision on the period of limitation refers to Art. 24 UPCA, which relates to the sources of law on which the Unified Patent Court is to base its decisions. Here, the key question is whether national law on the period of limitation is applicable in addition and, if so, to what extent.

There seem to be two possible interpretations of the introductory reference:

Either a supplementary application of national law – an approach of ”filling the gap”, as it were: This would mean that national law is applicable only concerning further details which are not answered by the UPCA (which means, for example, national provisions on the interruption or suspension of limitation).

Or a general additional application of national law, in that national law is applicable in addition to Art. 72 UPCA if the relevant national provision would result in a shorter limitation period.

In proceedings for bundle patents and even more so for unitary patents, many national provisions, which are not harmonized, are potentially applicable. Therefore, it appears preferable to interpret the situation such that national limitation law is also applicable if the underlying claim originates from national law.

Second, the UPCA refers to “actions relating to all forms of financial compensation”. This includes regular actions for the award of damages. Non-financial claims, such as claims for injunctive relief are not subject to this restriction.

Third, when the UPCA stipulates that such actions “may not be brought”, this can either be understood to mean that an action would be inadmissible in the first place or – as is the case under German national law – that the defendant has to raise a corresponding objection.

The case-law of the UPCA will have to establish a consistent practice.

In any case, in the early stages of the UPC system, it is certainly advisable to raise the corresponding objection.

Finally, concerning the specific duration of the period of limitation, the UPCA provides for five-year period. The specific calculation is to be carried out according to the corresponding provisions in the Rules of Procedure for every single act of infringement.

In contrast to German national law, the UPCA uses the knowledge of the applicant and not that of the creditor as a basis.

Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special

Welcome to today’s IP Quick Tip on the period of limitation under the Agreement on a Unified Patent Court and possible interpretations of the new legal framework.

Let us have a brief look at Article 72 UPCA:

There seem to be two possible interpretations of the introductory reference:

Or a general additional application of national law, in that national law is applicable in addition to Art. 72 UPCA if the relevant national provision would result in a shorter limitation period.

The case-law of the UPCA will have to establish a consistent practice.

In any case, in the early stages of the UPC system, it is certainly advisable to raise the corresponding objection.

In contrast to German national law, the UPCA uses the knowledge of the applicant and not that of the creditor as a basis.

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IP Quick Tip: Enforcement of UPC decisions

Get informed about the UPC on our dedicated website: https://www.bardehle.com/en/upc-special

As a general rule, decisions and orders by the UPC are enforced in accordance with the law of the Member State where the enforcement takes place. However, if the UPC Agreement or the UPC’s Rules of Procedure include specific provisions for enforcement, these provisions prevail over those of national law.

This is relevant, for example, for the enforcement of injunctions, which is governed by Article 63 of the UPC Agreement and Rule 354(4) RoP. Similarly to German law, non-compliance with an injunction may be sanctioned by a penalty payment to the Court. In contrast to German law, the UPC may also decide on penalty payment on its own motion, and there is no penalty detention, no upper limit for penalty payments, and no Court fees for the enforcement proceedings.

The enforcement of monetary claims, such as claims for damages, is not governed by the UPC Agreement or the Rules of Procedure, which means that national law applies. An interesting question is which Court is then competent for the enforcement — the UPC or the national Courts? But that’s a topic for another video.

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IP Quick Tip: Avoiding mistakes in AI-related patent applications

For more on patent prosecution, please visit our website: https://www.bardehle.com/en/competences/legal-areas/patent-prosecution

Today, I would like to provide you with some guidance on how to avoid three typical mistakes that I frequently encounter in patent applications relating to AI-based inventions.

These mistakes are: 1) Divided infringement, 2) insufficiency of disclosure, and 3) lack of plausibility

So, how can these mistakes be avoided? In practice, an AI model may be trained by a first entity, whereas the trained model may then be used by a second entity. Hence, a claim that is directed at both training and using a model may be neither infringed by the first nor by the second entity. To avoid such case of divided infringement, training a model and using the trained model should be claimed separately. This will significantly simplify asserting your patent towards potential infringers.

To meet the requirement of disclosing your invention in a manner sufficiently clear and complete for it to be carried out by the skilled person, it might be helpful to supplement your application with some sample training data, details on the model used, and details on the training method. This may enable the skilled person to create their own set of training data that can be used for training a model according to your invention.

Finally, to make it plausible that your invention actually produces the alleged technical effect, I suggest incorporating some test or measurement results into the application that show how well your AI-based invention operates.