The Court held that the marketing of coffee capsules suitable for a Nespresso machine does not infringe the patent on an extraction system for the coffee capsules. Instead, the user of the machine is also permitted to use capsules which are not marketed by the patent holder. This is at least the case if the…

The uninterrupted transit of goods designated with a trademark that is protected in Germany does not constitute an infringement of the trademark right according to German law. Should the trademark be protected in the country of destination, a foreign IP right will not be protected, owing to the principle of territory of property rights, as…

by Bernward Zollner In a case called “Produktionsrückstandsentsorgung” the German Bundesgerichtshof has discussed a case in which the claim of the litigious patent had been amended and narrowed with respect to the scope of protection after the judgment of the appeal court had been handed down. The appeal court therefore, could not have discussed the…

by Miriam Büttner On 27 November 2012 the German Federal Supreme Court (BGH) decided on the ethical problematical question, if neural precursor cells which origin from human stem cells are patentable or not (case no. X ZR 58/07). Background of the decision: Subject of this BGH decision is the validity of German patent no. 197…

In the assessment of inventive step, the question whether the prior art discloses a pointer for the skilled person to use the measures described therein, and to apply these to a known substance, could be relevant. It should be investigated whether the measures from the prior art gave rise to the expectation that the solution…

The Federal Court of Justice held that data can be a product directly obtained by a patented process and can therefore be protected. An important issue was whether patent rights were exhausted, if the patentee consented to market a video masterband and the infringer used this masterband to produce DVDs The court discussed whether there…

The German Supreme Court this year passed two major decisions on the requirements for invoking a right to prior use. In its Desmopressin decision (June 12, 2012, X ZR 131/09), the Supreme Court ruled that knowledge regarding technical effects is not required for a prior user to be in possession of an invention as long…