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Die Patentanwälte und Rechtsanwälte verfügen über jahrzehntelange Erfahrungen in der Sicherung u Competence: All from One Hand. Comprehensive Support.

Intellectual property is a valuable asset and is often critical to the economic success of an enterprise. The patent attorneys of the office von Kreisler Selting Werner have decades of experience in securing and defending the innovation associated with intellectual property in Germany, Europe and all over the world. We are a globally operating patent law firm offering comprehensive support in the

field of industrial property rights - all from one hand. Thus, our counseling takes into account the individual situation of our clients, whether they are sole inventors, research institutions, small and medium-sized enterprises (SME) or internationally active holdings.
•Personal counseling adapted to your individual needs already at the early stages of the development of an innovation or creation of a trademark.
•Elaboration, filing, attaining, monitoring and administration of industrial property rights in close coordination with you.
•Preparation and support of the judicial enforcement of your claims (nationally and internationally) when your industrial property rights are being infringed.
•Counseling for the continuous development and securing of your industrial property portfolio.
•Competent counseling and representation in aspects of intellectual property right in license agreements. Expertise in all technical fields. Due to the competence and knowledge available in our patent law firm, we are able to advise you in all technical, engineering and scientific fields, not only in issues of patent right, but also technical ones. Of course, our legal counseling also includes trademarks and designs. Beyond the legal and technical counseling, we also try to take into account your economical boundary conditions. Thus, we offer you a promising basis in finding the right solution for protectiing your innovations, thus ensuring permanent and sustained success.

04/12/2025

Brexit is catching up, and it may affect one of your trademarks, especially from the UK. According to the UK Withdrawal Agreement from the EU, the UKIPO created a comparable UK trade mark for all right holders with an existing EUTM . This also implied that the use of the UKIPO comparable trademark could be fulfilled by proving usage of the trademark within the EU. However, this is about to change.

December 31st, 2025 will be the fifth anniversary of the end of the Brexit transition period.

After this date, you will no longer be able to rely on use in Europe to support a comparable UK registration. If no use has been made of the marks in the UK in the last five years, your registrations may be susceptible to revocation for non-use.

We strongly suggest that you review your portfolio of UK registrations to confirm that you are making genuine use of the marks in the UK. If this is not the case, and you are still interested in the mark, you should either take steps to commence genuine use in the UK as soon as possible, or you should consider filing a new application to protect your mark in the UK.

16/09/2025

The Unified Patent Court (UPC) Court of Appeal has issued a clarifying order on the criteria for changing the language of proceedings based on fairness, pursuant to Art. 49(5) UPCA. In the case of Curio Bioscience Inc. v 10x Genomics, Inc. (UPC_CoA_101/2024), the Court set aside a first-instance decision and permitted a change from German to English, the language in which the patent was granted.

The decision establishes key principles for assessing such requests:

Primacy of the Defendant's Position:

In balancing the interests of the parties, particular consideration must be given to the defendant. The Court noted that if the outcome of balancing interests is equal, the position of the defendant becomes the decisive factor.

Relevant Circumstances:

The assessment of fairness must be based on all relevant circumstances, which should primarily relate to the specific case and the parties. In this matter, the Court considered the US nationality of both parties, the fact that English is the predominant language in the relevant technology field, and that the majority of evidence was in English.

Irrelevant Factors:

The Court clarified that the language proficiency of the parties' representatives or the nationality of the judges are generally not relevant circumstances. The focus remains on the parties themselves and their ability to fully comprehend the proceedings.

Claimant's Anticipation:

A claimant, having initially chosen the language of the patent during prosecution, should anticipate the possibility of conducting legal proceedings in that language before the UPC. Therefore, a change to the language of the patent cannot typically be considered unfair to the claimant.

This order provides a clear framework for future applications to change the language of proceedings, emphasizing a defendant-centric approach when fairness is assessed and reinforcing the significance of the language in which the patent was granted.

26/08/2025

In its decision T 0617/20, the Board of Appeal addressed the admissibility and allowability of a request for apportionment of costs that was filed after the withdrawal of an appeal and the subsequent closure of the proceedings.

Admissibility of the Request for Costs:

The Board determined that a request for apportionment of costs is not inadmissible for the sole reason that it was filed after the closure of the appeal proceedings. In doing so, the Board explicitly diverged from the findings in T 1556/14.

Key points on admissibility include:

A request for costs filed after the termination of appeal proceedings can initiate ancillary proceedings to resolve issues arising from the original appeal, without re-opening the substantive case.
The Board suggested that a reasonable time limit for filing such a request corresponds to the standard two-month period under Rule 132(1) EPC. A request submitted approximately one month after notification of the proceedings' closure was deemed admissible.

Allowability of the Request on the Merits:

Despite finding the request admissible, the Board refused it on the merits. The opponent had argued that costs were incurred because the appellant failed to withdraw its appeal in a timely manner.

The Board reasoned as follows:

The withdrawal of an appeal is a legitimate exercise of procedural rights and, in itself, does not constitute culpable behaviour that would warrant an apportionment of costs.
While parties are generally obliged to inform others as soon as a decision is made, they have no formal obligation to take more active steps, such as expediting their decision-making process, merely to avoid costs that other parties may have already foreseen. To impose such an obligation would place an unrealistic burden on parties to proceedings.
In summary, while a procedural pathway exists to request costs even after proceedings have formally concluded, the substantive threshold for such a request to be granted remains high. A late withdrawal of an appeal alone is generally not considered an equitable reason for a different apportionment of costs.

19/06/2025

Artificial intelligence has advanced rapidly in recent years and become widespread in many areas of life and work. This includes generative AI models such as ChatGPT, which can generate new texts based on large amounts of data.

This raises the question of whether ChatGPT can be considered a skilled person and whether ChatGPT´s outputs can be considered common general knowledge. These questions are addressed in the most recent decision T 1193/23 by the Board of Appeal of the European Patent Office.

This case is about an opposition appeal in which the patent proprietor attempted to interpret the terms 'position control' and 'checking', as defined in claim 1, in a narrow way, to distinguish the invention from the prior art. In support of this interpretation, the proprietor submitted text passages generated by ChatGPT in response to specific prompts.

However, the Board found that text generated in this way cannot be relied upon for interpreting technical terms in patent law. Firstly, the data used to train ChatGPT is not transparent. Secondly, such generative AI models are non-deterministic by nature, meaning identical prompts may generate different outputs. Consequently, the text generated by ChatGPT cannot be verified objectively and is therefore considered unsuitable for technical or legal assessments.

The Board also emphasized that the interpretation of certain terms in a claim may be substantiated by referring to relevant technical literature.

In addition, ChatGPT's current knowledge base is up to date until June 2024. Therefore, the effective date of most patent applications or patents is earlier than ChatGPT's current knowledge base. For this reason, ChatGPT can also not be considered a skilled person, and its outputs cannot be used as common general knowledge for those patent applications or patents.

This decision clarifies that AI can help people obtain information, but that this information cannot be used directly for technical or legal assessments in patent law. Such tasks must be carried out by humans to ensure legal certainty.

17/06/2025

While both second non-medical use claims and process claims are allowable under EP practice, the recent decision T 1913/21 highlights a crucial differentiation between them, with significant implications for the assessment of novelty and the resulting scope of protection.

The case concerned Biogen's patent EP 2707383 B1, which relates to methods of preventing and eliminating the formation of trisulfide bonds during the manufacture of proteins (e.g. antibodies), as such bonds in antibodies are generally undesirable.
Claim 1 on appeal reads as follows: "Use of an inhibitor of cysteine degradation for reducing the formation of trisulfide bonds in proteins, wherein the inhibitor of cysteine degradation is selected from pyruvate [...], wherein the use comprises: culturing cells expressing said proteins in the presence of an effective amount of the inhibitor of cysteine degradation, whereby trisulfide linkage formation in said proteins is reduced [...]".

The Opposition Division construed claim 1 as a second non-medical use claim, wherein the technical effect of pyruvate in reducing trisulfide linkage formation was considered a limiting functional feature of the claim. On this basis, it found the claim to be novel and inventive.

However, on appeal, the Board took a different view. It found that the claimed subject-matter comprises carrying out process steps that result in the production of a product —specifically, proteins with fewer trisulfide linkages. As such, the claim shall be construed as a process claim under Article 64(2) EPC, not a second non-medical use claim as per G 2/88 and G 6/88.

Given that the prior art disclosed culturing cells in the presence of pyruvate, the Board concluded that claim 1 lacks novelty, regardless of whether the specific reduction of trisulfide bonds was previously recognized.

The present decision provides clarification on the distinction in the novelty assessment between non-medical use claims and process claims, emphasizing that the mere inclusion of the word 'use' is not determinative—what matters is the actual technical subject-matter claimed.

03/06/2025

Recently a Unified Patent Court (UPC) Court of Appeal (CoA) judge shared that he considers the UPC_CoA_1/2024 order from 13 May 2024 as one of the most important ones from the CoA so far.

While this order has already had its first anniversary, its an important one, since it clarifies the CoA's early and clear stance on claim construction.

The key legal point lies in its clear guidance on claim interpretation. According to the Order: "Claim features must always be interpreted in the light of the claim as a whole." In the present case concerning EP 3883277 (electronic shelf labels), the CoA analyzed three features related to component placement not in isolation, but in conjunction, to determine their meaning.

Notably, the CoA, in contrast to the court of first instance, also found it unnecessary to delve into the admissibility of prosecution history for claim interpretation in this specific instance, as the meaning was already clear from the claim, description, and drawings through the eyes of the skilled person.

This order provides valuable early guidance on the UPC CoA's approach, clarifying on how claim interpretation will be handled by the UPC. In our eyes a good read for everyone involved in UPC litigation.

The full order can be found here:https://www.unified-patent-court.org/sites/default/files/files/api_order/Anordnung%20SES%20Hanshow%20fin%20EN.pdf

15/05/2025

In its decision of February 11, 2025 (X ZR 137/22), the German Federal Court of Justice (Bundesgerichtshof - BGH) addressed the inventive step of European Patent EP 1 455 175 concerning an apparatus for moisture and ash analysis. The patent relates to an apparatus featuring, among other things, a furnace with a weighing platform inside, a rotating support for multiple crucibles, and means for automatically placing and removing crucibles through a hole in the furnace top, allowing the furnace to remain substantially closed during this process.

The nullity plaintiff argued, inter alia, that the subject matter lacked inventive step over the prior art, particularly starting from document N1 (DE 33 02 017 / US 4,522,788) combined with document N2 (US 6,203,760). N1 discloses a furnace with internal rotating crucible support but requires manual loading and opening of the furnace lid. N2 discloses an autosampler capable of inserting crucibles through a top opening into various analysis devices, mentioning thermogravimetric analysis (TGA) devices generally.

The BGH upheld the Federal Patent Court's finding of inventive step, rejecting the appeal. The Court reasoned that combining N1 and N2 was not obvious to the skilled person. Key considerations included:

Operational Mismatch: The process in N1 involves inserting empty crucibles and subsequently filling them inside the furnace, requiring the lid to be opened. N2's autosampler is designed to insert pre-filled crucibles. Simply adding N2's sampler to N1's apparatus would not automate N1's entire process efficiently and would still necessitate opening the lid for filling.
Lack of Specific Suggestion: N2's general statement that its autosampler is suitable for TGA devices does not provide a specific suggestion to combine it with the particular multi-crucible, internal-filling furnace design of N1, nor does it suggest modifying N1's established operating procedure.
Fundamental Changes Required: Achieving the patented invention's advantages (automated loading of pre-filled crucibles while keeping the furnace substantially closed) would require fundamental modifications to N1's apparatus and procedure, for which N2 offered no motivation.
The decision underscores a key principle highlighted in the judgment's headnote: An indication in the prior art that a device can be combined with a certain type of apparatus does not automatically suggest combining it with every specific apparatus of that type, particularly when significant operational differences exist.

The BGH also confirmed that the invention was sufficiently disclosed, finding that the implementation of the automatic handling means, considering the high temperatures involved, was within the capabilities of the skilled person based on common general knowledge at the filing date.

27/03/2025

Case G1/23 arose from appeal T 438/19, concerning European Patent No. 2626911 (Mitsui Chemicals), which was opposed by Borealis AG. The case focused on whether the composition of the polymer product ENGAGE® 8440 is part of the prior art, even if it cannot be fully analyzed and reproduced without undue burden. This refers to the interpretation of G1/92, which states that a publicly available product belongs to prior art if it can be analyzed and reproduced by a person skilled in the art. Due to uncertainties in applying this, three referral questions were brought to the Enlarged Board of Appeal (EBA) as G1/23. Due to the

Oral proceedings were held on March 12, 2025, before the EBA of the EPO. The Board summarized the case, confirming that the assessment of inventive step depended on whether ENGAGE® 8440 was prior art.

Borealis (Opponent) argued that a product made publicly available should be considered prior art even if it cannot be fully analyzed or reproduced. They stated there is no legal basis in the EPC requiring full reproducibility, and such a requirement would create uncertainty in novelty assessments. They also claimed G1/92 did not explicitly address reproducibility, requiring clarification.

Mitsui (Patent Proprietor) argued that a product, like a written disclosure, must provide an enabling teaching to be considered prior art. They emphasized that the patent system is based on an exchange of knowledge for protection. If a product cannot be reproduced, it does not contribute to public knowledge in the same way as a patent disclosure and should not be considered part of the state of the art.

Borealis argued the second question should be answered “yes”: technical information about a publicly available product is part of the state of the art, regardless of whether the product can be fully analyzed and reproduced. Therefore, answering the third question was unnecessary.

Mitsui argued the second question should be answered “no,” claiming technical information disclosed in relation to a product cannot be separated from the product itself without broadening the disclosure. Regarding the third question, Mitsui contended it should be left to the competent Technical Board to determine in each case whether a product’s composition and internal structure are analyzable and reproducible.
The EBOA indicated that all relevant points had been discussed, and the decision, along with the minutes, would be published as soon as possible.

25/03/2025

Effective 1 April 2025, the Lao People’s Democratic Republic (Lao PDR) – the official name for Laos, a landlocked country in Southeast Asia known for its emerging market potential, will become a new validation state for European patents.

On 13 May 2024, the President of the European Patent Office and the Lao Deputy Minister of Industry and Commerce signed a landmark agreement to enable the validation of European patent applications and patents in Lao PDR. This pivotal step, reinforced by recent amendments to the Patent Law of Lao PDR, lays the legal foundation for a validation process that offers essentially the same level of protection as that provided in the 39 member states of the European Patent Organisation.

• Validation is automatically requested for all European or international applications filed on or after April 1st, 2025
• A validation fee of EUR 180 applies.
• The process will be accessible via the EPO’s online filing tools, with updated forms available on the EPO website.

For more details on the procedural aspects and updated guidelines, please refer to the official EPO website: https://www.epo.org/en/legal/official-journal/validation-of-European-patents-in-la

13/03/2025

The UPC's Local Division in The Hague has issued its first decision on equivalent patent infringement in Plant-e v. Bioo, establishing the first precedent for assessing equivalence under the Unified Patent Court system.

📋 The court adopted a four-prong test derived from Dutch case law to evaluate equivalent infringement:

Technical Equivalence:
Whether the variant performs the same function and solves the same technical problem

Fair Protection:
If extending patent scope to cover the variant is justified

Reasonable Certainty:
Whether skilled persons would understand the variant falls within the patent's scope

Novelty/Inventiveness:
If the alleged equivalent is novel and inventive over prior art

🔍 Case Outcome: Applying this test to Plant-e's microbial fuel cell patent, the court found Bioo's soil-based devices infringed by equivalence, even without literal infringement. Though Bioo argued their devices operated without requiring living plants, the court determined they achieved the same technical result through substantially similar means.

💡 Key Takeaways: This ruling provides the first structured framework for assessing equivalence at the UPC, balancing fair protection for patentees with legal certainty for third parties. However, it remains to be seen whether the UPC Court of Appeal will uphold this approach or develop alternative criteria for evaluating equivalent infringement across the unified patent system.

⚖️ Bottom Line: The decision highlights the importance of considering both literal and equivalent infringement when evaluating patent risks in Europe under the new UPC system.

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