Section 01

Patent Law

Fabry, B.
Interpretation of claims in France
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“), 402,  2004

After many years of literal interpretation of claims in French legislation, there are indications of a paradigm shift now. If current jurisdiction sets a precedent, every third person has to reckon with the fact that the scope of protection of French patents is no longer tied to area specifications that correspond to the claims but the courts can much more focus on the technical aspects under the doctrine of equivalence by anology with the German or Great-Britain jurisdiction preset that there are no reasons requiring a strict interpretation. Thereby, the patent holder’s position is strengthened at the expense of the legal certainty. By contrast, the decision-making practice in the US grants the plea of Process History Estoppel to the potential infringer according to which characteristics which were amended during patent application procedure are generally no longer available for an equivalence in most of the cases.

Fabry, B.
Industrial Property Rights in Spain
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“), 405, 2004

The essay clarifies the different ways of how an applicant can file a Spanish patent application as well as it deals with practice proofs and compulsory licences and it gives hints how Spanish patents and utility models can be enforced.

Fabry, B.
Enforcement of industrial property righhts in Korea
Notice of German Patent Attorneys („Mitteilungen der Deutschen Patentanwälte“) 105, 2005

Within the last few years, Korea made extensive efforts in order to modernize its patent system and to implement all requirements of TRIPS. The Korean court’s recent decisions allow us to suggest that the previous practice of sentencing which – subjectively or objectively – gave an advantage to domestic companies especially when it came to infringement cases with foreign patent holders does not exist any longer. Korean patent holders might hava a home advantage when it is about domestic patent right but, beyond that, more and more international and fair standarts are applied. In particular, when considering Korea’s economic importance, this is an encouraging sign for all foreign investors which in future will make it considerably easier when deciding for the application, maintenance and, if necessary, enforcement of patents.

Fabry, B., Trimborn, M.
Contributory patent infringement – the underestimated business risk
GRUR 561, 2008

According to § 10 PatG, the patent holder is granted a beforehand protection which allows a cease and desist order even in case of contributory patent infringement. Thereby, every distributor of semi-finished products should assume for its own security that he is, by patent law, responsible for whatever his client does with his products. The only exception is when the product’s components were generally neither adequate for being an inventional essentially element nor were they able to collaborate with such or when the distributor can proof that he had neither positive knowledge about is nor were there circumstancers given which made it obvious that the client uses the delivered goods in a patent infringing way. Taking the current BGH’s jurisdiction as basis, the requirements for exculpating that way are very high. To avoid a contributory patent infringement, distributors have extensive due diligence obligations. In particular, product releases under patent protection must consider not only the the known but also the probable client’s applications. Concrete warnings against protected use of delivered products can be appropriate to reduce or in some cases even to avoid the danger of contributory patent infringement. Whether there is a claim for damages even when the contributory patent infringement was avoided in advance is still disputed. The supply from abroad is not judged differently than the one from inland. In summary, the offense of contributory patent infringement has long time been underestimated. Due to the enxtensive lack of knowledge regarding the current Supreme Court’s jurisdiction, it is a serious business risk.

Fabry, B.
No compound protection without process use
GRUR Int. 803, 2009

Product-by-Process-claims define a poduct trhough its procedure of production. According to German jurisdiction, these are real compound claims, i.e. the compound’s protection is not tied to its manufacturing process. In the USA – but also in many other important industrialized countries – the question regarding the protection of product-by-process claims was treated differently from courts for many decades. Trhough the en-banc Abbot v. Sandoz decision, at least the CAFC ends up legal uncertainties and determined that procedural features limite product-by-process claims: if a product is not produced according to the procedural features of the claim, no identitiy and, therewith, no infringement is given.

Busche, J., Trimborn M., Fabry B.
Patent Infringement Worldwide
Carl Heymanns Verlag (2009)
EUR 138,-