Leveraging USPTO Delays To Maximize Patent Term
Before the USPTO was subject to a hiring freeze, it assumed it would onboard 400 new examiners between fiscal year 2025 and fiscal year 2026, and still predicted an increase in the backlog of unexamined patent applications. With a hiring freeze in place, the current backlog at nearly 838,000 unexamined patent applications, and the wait for initial examination already over 20 months, applicants can expect the time required to obtain a patent to increase. While these delays may not be ideal, applicants can leverage them to their advantage by maximizing patent term through patent term adjustment (PTA) awards.
USPTO Examination Delays Result in PTA Awards
By statute, the USPTO must award patent term adjustment when it fails to meet certain examination timeline metrics, including issuing a first Office Action within 14 months and taking no more than three years to grant a patent. USPTO PTA statistics from January 2025 show that barely 30% of patent applications are being examined within 14 months, and the number of patents taking more than three years to grant is at a two-year high of over 20%. Assuming patent application filings maintain their current level or (more likely) increase, more patents could be eligible for longer PTA awards.
Avoiding PTA Deductions for Applicant Delay
Not all USPTO delays result in PTA awards. The final PTA calculation subtracts any “applicant delay” from USPTO delay. Applicants seeking to maximize patent term should take care to minimize PTA deductions, including by:
Ensuring a compliant Sequence Listing is filed within eight months of the application filing date or national stage commencement date
Avoiding filing a preliminary amendment or other preliminary paper more than eight months after the filing date (or national stage commencement date) and less than one month before the mailing of an Office Action
Understanding how Information Disclosure Statement (IDS) rules differ from PTA rules and timing IDS submissions to minimize PTA deductions
Currently, U.S. national stage applications (based on PCT applications) experience much longer early-stage processing delays than directly filed U.S. applications (on the order of months to years). If this trend continues, opting to pursue a U.S. patent via the PCT/national stage route could be another approach to earn significant PTA.
Avoiding Terminal Disclaimers That Override PTA
Even if a patent is awarded significant PTA, entitlement to that extended term could be in jeopardy if a terminal disclaimer is filed over a patent with a shorter term. To avoid leaving PTA on the table, applicants should consider portfolio development strategies that minimize the need for terminal disclaimers, such as by:
Including multiple independent claims in an original application to trigger restriction requirements
Responding to restriction and election of species requirements without traverse to preserve the right to file divisional applications
Filing true divisional applications entitled to the protections of 35 U.S.C. 121 against obviousness-type double patenting (OTDP), and invoking the safe harbor of 35 U.S.C. 121 as a defense to OTDP
Appealing weak rejections instead of filing RCEs to earn PTA from favorable appeal decisions and avoid the PTA implications of RCEs
Minimizing voluntary continuation applications that can raise OTDP issues
Understanding the contours of recent Federal Circuit decisions such as Cellect and Allergan on the interplay between OTDP, terminal disclaimers, and PTA
While USPTO examination delays may present challenges for stakeholders building their patent portfolios, they also present opportunities to maximize value through longer patent terms. By pursuing strategies that minimize PTA deductions and preserve PTA awards, applicants can significantly extend the life of their patents, potentially creating additional opportunities to capitalize on their innovations. As USPTO examination delays continue to grow, effectively leveraging them to maximize patent term could provide a competitive edge in the market, especially in industries such as biotechnology and pharmaceuticals, where long-term patent protection can be important.
USPTO Rescinds Vidal’s 2022 Guidance on PTAB Discretionary Denials
On February 28, the US Patent and Trademark Office (USPTO) rescinded former Director Kathi Vidal’s 2022 memorandum on discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings running parallel to district court litigation.
The USPTO additionally clarified that any PTAB or director review decisions relying on Vidal’s memo are no longer considered binding or persuasive authority.
Vidal’s memo had clarified when the PTAB should exercise its discretion to deny institute trial in PTAB proceedings when there is a parallel district court litigation over the same patent. Specifically, the now-rescinded memo made clear that the PTAB should not discretionarily deny institution in three particular situations: (1) where the petition presented “compelling merits” of unpatentability; (2) where the parallel proceeding before the International Trade Commission, and (3) where the petitioner stipulates not to pursue in the parallel proceeding the same unpatentability grounds as in the petition or any grounds that could reasonably have been raised in the petition (a Sotera stipulation).
Unsurprisingly, Vidal’s memo led to a notable decline in discretionary denials and a corresponding rise in the PTAB’s institution rate.
Without replacing guidance, it is difficult to predict the exact implications of the USPTO’s rescission of Vidal’s memo. While the PTAB may still conduct a “compelling merits” analysis, it will only be one factor and no longer a dispositive one. So too with Sotera stipulations. The PTAB may also begin discretionarily denying institution in ITC parallel proceedings.
Absent further guidance from the USPTO, practitioners should expect a more unpredictable and discretionary approach to post-grant proceedings.
We are monitoring this situation closely as it develops and will provide updates as they are available.
No Infringement of Nonfiction Work by Makers of Tetris Film – Court Uses Wrong Analysis to Reach the Right Result
Ackerman v. Pink asks how much of a written history can be claimed as proprietary by the author of that history. The answer: Not much. It is black letter that the author of a non-fiction work cannot prevent others from using historical facts in some other work – even if those historical facts are known only because of the author’s independent research. Copyright covers only the author’s expression of the research, not the research itself.
Ackerman is interesting because the analysis the court uses to separate the historical fact from the author’s expression is misplaced – even though the Court appears to have reached the right conclusion.
Daniel Ackerman, the author, sued several entities claiming that the film Tetris (the “Film”) infringed his copyright in a book he wrote about the video game Tetris – The Tetris Effect: The Game that Hypnotized the World (the “Book”). The Book purports to be a non-fiction history of the development of the video game Tetris. The Film also purports to tell the same story – albeit with some dramatic embellishments.
The opinion by district judge Katherine Polk Failla recites the relatively vanilla proposition that historical facts cannot be claimed by an author of a non-fiction work of authorship. So far, so good. The problem, however, is where the court compares certain purportedly historic scenes in the Book with how they are portrayed fictionally in the Film in an effort to separate the facts from the expression.
The court recounts several factual differences between the portrayal of historical scenes in the Book and the dramatization in the Film to hold that the expression of the former is not copied by the latter. For example, the Book describes one of the characters pitching Tetris to Sega in Japan. In the Movie, however, there are several differences including the fact the scene takes place in Seattle. Given that that historical facts described in the Book are not protected by copyright, whether the Film changed some of the facts should be immaterial to the court’s analysis. To the extent the author of the Book described certain scenes exactly as they happened, the Film was within its rights to portray those same facts as they happened. Nonetheless, the court’s analysis, to some degree, depends on these factual differences to hold that the Film does not copy the Book author’s expression.
The Court went on to compare the “total concept and overall feel of the two works” by focusing on the organization and focus of the Book and Film. This framework does seem to separate Book author’s expression from the unprotected historical facts. For example, the court noted that “the Book jumps through time to provide as much background and context as possible for the people and events it portrays, the Film proceeds largely chronologically.” The court, however, could find no evidence that the Film somehow misappropriated the way the author “selected, coordinated, and arranged the facts in his Book.”
While Judge Polk Failla reached the right result (in our view), her focus on the difference in the facts unnecessarily muddies the water on separating protected expression from something underlying that expression that is in the public domain. A subsequent author who wishes to write a book or make a movie about an historical event should not be required to change the historical facts to avoid a finding that they copied the original author’s expression – even though the makers of the Film chose to do so here.
No Copyright Protection for Birkenstock Sandals: A Significant Decision from the German Federal Court of Justice
On 20 February 2025, the German Federal Supreme Court (BGH) delivered a landmark ruling in a case concerning the copyright protection of Birkenstock sandals. In its decision, the BGH firmly rejected the claim that Birkenstock’s sandal designs qualify for copyright as “applied art” under German copyright law. This judgment not only clarifies the scope of protection for industrial design works but also contrasts with prior rulings from regional courts in Hamburg and Cologne, highlighting the challenges of determining what constitutes “creative” or “artistic” design in functional products.
The Case: Birkenstock’s Fight for Copyright Protection
The case arose when Birkenstock, a prominent footwear brand, sought copyright protection for several of its sandal models, arguing that the designs were works of applied art. The company pursued legal action against various defendants selling or manufacturing sandals that allegedly infringed its copyright. Birkenstock’s argument was based on the claim that its models exhibited a level of artistic creativity deserving of copyright under Section 2 of the German Copyright Act (UrhG), which protects works of applied art if they meet certain requirements.
In earlier proceedings, both the Hamburg District Court and the Cologne Higher Regional Court had taken differing stances on the matter, with one court finding that the sandals could indeed be protected under copyright, and the other dismissing such a claim. However, the BGH ultimately sided with the Cologne Higher District Court, confirming that the Birkenstock sandals did not meet the required threshold for copyright protection.
The BGH’s Reasoning
The BGH’s decision hinges on the fundamental principle that copyright protection is reserved for creations with a certain degree of artistic and creative originality. The court emphasised that applied artworks, such as footwear designs, must reflect a “free and creative” use of design space. When a product’s design is primarily driven by technical or functional constraints, such as the necessity for comfort or durability, it cannot qualify for copyright protection. This has been described by the Cologne Higher District Court (6 U 89/23) as follows:
‘Art tends to be characterised by its freedom of purpose, design by its orientation towards use. Art begins with an idea. Design begins with a task.’
According to the BGH, the designs in question lacked the “design freedom” required to be considered works of applied art. The court pointed out that any creative contribution to the sandal designs was too minimal to meet the necessary level of artistic originality. Essentially, Birkenstock’s sandals were seen as primarily utilitarian products, with the decorative aspects insufficient to elevate them to the level of artistic creation worthy of copyright protection.
Diverging Opinion from the Hamburg District Court
Interestingly, the Hamburg District Court had previously taken a different view on the matter. In the 2022 case (310 O 40/22), the Hamburg District Court ruled that Birkenstock sandals were indeed eligible for copyright protection, recognizing the designs as works of applied art. The court took a more lenient approach, arguing that the aesthetic aspects of the sandals, despite their functional purpose, exhibited enough individuality to warrant copyright recognition.
Conclusion
In fact, the BGH’s decision probably does not change much from a practical perspective when seen in context with the BGH’s reference for a preliminary ruling to the European Court of Justice (ECJ) in the USM Haller case (BGH: ECJ referral on the concept of a work under copyright law — USM Haller GRUR 2024, 132, marginals # 18, 20).
In this reference for a preliminary ruling to the ECJ, the BGH stated that it does not understand the “Cofemel” decision of the Court of Justice (ECJ GRUR 2019, 1185 para. 50–52 — Cofemel) to mean that copyright protection for works of applied art should be subject to stricter requirements than copyright protection for works of purpose free art.
Furthermore, the BGH takes the view that the examination of originality for all types of works must be carried out objectively and uniformly based on the specific work submitted. The subjective view of the author in the sense of creative intention or the awareness of free creative decisions, according to the BGH, should not be relevant (BGH: ECJ referral on the concept of a work under copyright law — USM Haller GRUR 2024, 132, marginal # 27).
The examination is carried out based on circumstances in which a possible creative intention of the creator is expressed in an objectively ascertainable manner. It cannot be inferred from the case law of the Court of Justice that, in addition to the finding that the author made an objectively unconstrained and thus free (creative) decision, it is necessary to establish that the author was aware that he was making a free (creative) decision in this sense.
The awareness of making a creative decision cannot be required either, because artistic achievements can also be made unconsciously or subconsciously (BGH: ECJ referral on the concept of a work under copyright law — USM Haller GRUR 2024, 132, marginal # 30). Insofar as the Court of Justice in the “Brompton Bicycle” decision referred to the factors and considerations that guided the creator in choosing the shape of the product (ECJ GRUR 2020, 736 para. 35 f — Brompton Bicycle), it does not follow from this, in the opinion of the BGH, that the assumption of originality presupposes the establishment of a “conscious” creative decision by the creator. Rather, it follows from the context of the grounds of the court’s decision in the “Brompton Bicycle” case that what matters is whether the result of the creative process constitutes an artistic achievement.
Thus, the national courts must determine whether the author of the product has expressed his creative ability in an independent manner by choosing its shape, by making free creative choices and by designing the product in such a way that it reflects his personality (ECJ GRUR 2020, 736 para. 34 — Brompton Bicycle) (BGH: ECJ referral on the concept of a work under copyright law — USM Haller GRUR 2024, 132, marginal # 31).
While Birkenstock’s iconic sandals are undoubtedly well-recognised globally for their design and comfort, the BGH made it clear that these features alone are not sufficient for protection as copyright. Birkenstock’s iconic sandals, in the view of the BGH, began with a task rather than with an idea. As such, they do not meet the threshold of required creativity. While this ruling contributes to the ongoing dialogue around the limits of intellectual property protection for designs that straddle the line between functionality and artistry, it will certainly not mark the end of this dialogue.
Unified Patent Court Publishes First Annual Report
The Unified Patent Court (UPC) and the Unitary Patent, which launched on June 1, 2023, marked a historic milestone, allowing for the enforcement of patents across borders via a single court. The UPC has now issued its first Annual Report.
Of note, since its inception, the UPC has handled a significant number of cases, with 633 actions filed by the end of 2024. This large influx of filings has enabled the Court to already develop a baseline comprehensive body of case law, enhancing legal certainty and predictability.
Of further note, looking ahead, the UPC plans to implement a new Case Management System by mid-2025, in collaboration with the European Patent Office, to address current system limitations. The Court also aims to establish the Patent Mediation and Arbitration Centre to enhance its dispute resolution capabilities, with a goal of allowing it to become operational this year. We will continue to monitor these new developments as the UPC continues to evolve as a pillar of the European patent system.
A New Alice Plot Twist – Can a Composition of Matter Be an Abstract Idea?
Federal Circuit Holds that “Polycrystalline Diamond Compact” Claims Are Not Directed to an Abstract Idea
The patent world tends to think that the Supreme Court’s framework in Alice1 is a template for determining the eligibility of software and business method inventions2. Under 35 U.S.C. § 101, abstract ideas are not eligible for patent protection.3 Ineligible abstract ideas have included claims directed to mathematical equations, certain business methods, and mental processes.4 Interestingly, the Federal Circuit recently evaluated claims directed to a diamond compact and determined that they were not directed to an ineligible abstract idea under § 101. While these composition of matter claims survived, we see implications for patent practitioners in the chemical and materials arts.
On February 13, 2025, the Federal Circuit reversed a ruling from the ITC holding claims directed to a polycrystalline diamond compact (PDC) from U.S. Patent No. 10,508,502 invalid as directed to an abstract idea.5 The PDC claims comprise “a polycrystalline diamond table . . . including: a plurality of diamond grains . . . and a catalyst including cobalt;” and “a substrate bonded to the polycrystalline table.” The claims also recite certain magnetic property ranges. The specification of the patent explains that these magnetic properties correlate to low levels of cobalt in the PDC, and low levels of cobalt are associated with stronger PDCs.6
At the ITC, the presiding ALJ applied the two-step framework of Alice7 to the claims at issue. The ALJ found that the claims recited some structural features (grain size and a catalyst), and the magnetic properties were “side effects.” The ALJ further reasoned that “[t]here may be some causal connection” between the recited magnetic properties and structures, but it “is so loose and generalized” that the “claimed limitations appear to be little more than side effects.”8 The ITC largely agreed and determined that the magnetic properties were merely the “the result of sintering conditions and input materials that went into manufacturing the PDC.”9
The Federal Circuit held that the “claims are directed to a specific, non-abstract composition of matter—a PDC—that is defined by its constituent elements . . ., particular dimensional information . . ., and quantified material properties . . . .”10 The court disagreed with the ITC’s reliance on the patent specification’s use of “may” to support its position that the correlation between the magnetic properties and structural features is “too weak and equivocal.” Rather, the paragraphs employing “may” also have sentences that unequivocally use “indicates” to establish the correlation.11 Further, the patent includes several working PDC table examples illustrating that the claimed magnetic properties are indicative of low levels of cobalt in comparison to prior art PDC tables.12 Ultimately, “no perfect proxy” is required to tie the recited properties to the recited structure.13
US Synthetic offers takeaways for patent practitioners who draft composition of matter claims. There is at least some risk that a recited property in a composition of matter claim could be held an ineligible abstract idea under § 101. One can substantially reduce this risk by working with inventors to draft patent applications that: (a) identify actual examples and comparative examples that illustrate a relationship between the recited properties and structure; (b) include specification passages that discuss proven or believed relationships between each of the claimed properties and structure; (c) avoid the use of the term “may” in the patent specification when correlating properties to structure; and (d) avoid equivocation when supporting claimed elements in the specification. At the same time, patent drafters should avoid couching these property/structure connections as the invention or as being critical to the invention because these constructions might be construed by a court as limitations in claims that do not expressly recite these properties and/or structures.
If you have any questions about the impact of US Synthetic or patent issues more generally, please contact your Miller Canfield attorney or the authors of this alert.
Footnotes
1 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
2 See generally U.S.P.T.O. Manual of Patent Examining Procedure (MPEP) § 2106.04(a).
3 E.g., Diamond v. Diehr, 450 U.S. 175, 185 (1981).
4 See MPEP § 2106.04(a).
5 US Synthetic Corp. v. Int’l Trade Comm’n, __ 4th__, 2025 WL 478762, No. 2023-1217 (Fed. Cir. Feb. 13, 2025).
6 Id. at *1-4.
7 In the first step, the court must assess the claims in their entirety to determine “whether their character as a whole is directed to excluded subject matter.” Alice, 573 U.S. at 218. If the claims are directed to an abstract idea, step two requires the court to assess “the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.” Id. at 217.
8 US Synthetic, 2025 WL 478762, at *4.
9 Id. at *5.
10 Id. at *6.
11 Id. at *7.
12 Id. at *8.
13 Id. at *7.
China’s Supreme People’s Procuratorate Releases 2025 Work Report – 21,000 People Prosecuted For IP Crimes
On March 8, 2025, China’s Supreme People’s Procuratorate (SPP) released its 2025 Work Report at the 14th National People’s Congress. Regarding intellectual property, the SPC states that 21,000 people we prosecuted for IP crimes in 2024 and highlighted the trade secret case of Zhang, who was prosecuted under China’s version of the Economic Espionage Act. Other significant criminal IP cases were surprisingly not highlighted, like the 9-year prison sentence for criminal copyright infringement of Lego bricks.
The opening ceremony of the third session of the 14th National People’s Congress was held in the Great Hall of the People in Beijing.
The IP section from the SPP’s work report follows:
Serve innovation-driven development. Strengthen judicial protection of intellectual property rights, promote the cultivation and growth of emerging industries such as artificial intelligence and biomedicine, assist in the transformation and upgrading of traditional industries, and protect the development of new quality productivity in accordance with local conditions. We prosecuted 21,000 people for crimes such as infringement of trademark rights, patent rights, copyrights and trade secrets. In one case, Zhang and others illegally obtained a company’s core chip technology, and the Shanghai Procuratorate filed a public prosecution for suspected infringement of trade secrets. We handled 4,219 civil, administrative and public interest litigation cases involving intellectual property rights, protect the legitimate rights and interests of scientific and technological innovation entities in accordance with the law, and serve high-level scientific and technological self-reliance.
The full text is available here (Chinese only)
China’s Supreme People’s Court Work Report – Number of Punitive Damages Awards Up 44%
On March 8, 2025, at the third session of the 14th National People’s Congress, Zhang Jun, President of the Supreme People’s Court (SPC), delivered the SPC’s annual work report. President Zhang highlighted the increase in punitive damages awarded in intellectual property cases including the 640 million RMB award in an electric vehicle trade secret case (although only the non-monetary portion of the judgement has been satisfied as the unnamed defendant is bankrupt). Punitive damages were awarded in 460 cases of malicious infringement with serious circumstances, an increase of 44.2% year-on-year. Overall, 494,000 intellectual property cases were concluded, an increase of 0.9% year-on-year.
Excerpts related to intellectual property from the work report follow.
II. Serving high-quality development with strict and fair justice
Serve the construction of a unified national market. Strengthen anti-monopoly and anti-unfair competition judicial work. The SPC issued judicial interpretations on anti-monopoly civil litigation, and identified 31 cases of monopoly, a year-on-year increase of 2.1 times. 10,000 cases of unfair competition such as infringement of trade secrets and collusion in bidding were concluded, a year-on-year increase of 0.7%. In one case, Sun and others set up a peer company in anonymity and misappropriated the technical secrets of the original unit for more than 10 years. The court applied punitive damages and ordered the company and Sun and others to pay joint compensation of 160 million RMB.
Serve the development of new quality productivity. 494,000 intellectual property cases were concluded, an increase of 0.9% year-on-year. Serve the key core technology research and industrial development. Strengthen judicial protection of intellectual property rights in the fields of new generation information technology, high-end equipment, biomedicine, new materials, etc., and promote the transformation of innovative achievements. In the six years since its establishment, the Intellectual Property Court of the Supreme People’s Court has concluded nearly 20,000 technical intellectual property appeals, among which the number and proportion of cases involving strategic emerging industries have increased year by year, reaching 1,233 in 2024, accounting for 32.3%. Properly handle cases involving artificial intelligence disputes in accordance with the law, support the legal application of artificial intelligence; punish infringements using artificial intelligence technology, and promote standardized and orderly development. Strictly protect innovation in accordance with the law. Punitive damages were applied to 460 cases of malicious infringement with serious circumstances, an increase of 44.2% year-on-year. The “new energy vehicle chassis” technical secret infringement case was heard in accordance with the law, and punitive damages of 640 million RMB were awarded. The infringer was ordered to stop the infringement, and the calculation standard of delayed performance fee was clarified to encourage its automatic performance. Explore the information disclosure mechanism of related cases and punish those who disrupt the innovation order in the name of rights protection. A company maliciously registered and hoarded trademarks in large quantities based on the business names and main identifying parts of trademarks that were used previously by others, and made profits by suing others for infringement. The Hunan Court ruled to dismiss the lawsuit and imposed a fine of 100,000 RMB as punishment.
Serving the expansion of high-level opening-up.
…In a patent infringement case, based on an urgent application by a domestic science and technology enterprise, the court made the first behavior preservation ruling in the field of intellectual property rights in China in accordance with the law with an anti-antisuit injunction, supporting the right holder’s legitimate rights protection. Subsequently, Chinese and foreign parties reached a package settlement on 16 lawsuits involving 6 courts at home and abroad.
Work Plan for 2025
First, seek progress while maintaining stability, and perform duties and responsibilities in line with the promotion of Chinese-style modernization.
…Strengthen anti-monopoly and anti-unfair competition justice. Guarantee innovation and creation in accordance with the law, and help develop new quality productivity.
Third, strict management and loving care, forging a loyal, clean and responsible iron army of the courts in the new era.
…Build a professional trial personnel pool for intellectual property, finance, bankruptcy, foreign-related, maritime, environmental resources, etc., improve the medium- and long-term training plan for outstanding personnel, and jointly cultivate socialist rule of law talents with universities.
The full text is available here (Chinese only).
Supreme People’s Court Presiding Judge Chen Wenquan Elaborates on 640 Million RMB Trade Secret Case
On March 7, 2025, Judge CHEN Wenquan, the Supreme People’s Court judge that presided over the case that yielded the largest intellectual property damages in China’s history, elaborated on the case. In decision （2023）最高法知民终1590号 released June 14, 2024, the SPC applied 2X punitive damages on appeal in a dispute between two well-known (and unnamed) domestic automotive companies regarding new energy vehicle chassis technical trade secrets that were misappropriated in a personnel poaching scheme. The plaintiff is believed to be Geely Holding Group and the defendant is WM Motor. Note that WM Motor is reportedly insolvent so collection is unlikely. Below, Judge Chen only mentioned the non-monetary obligations were fulfilled.
Judge Chen stated:
To build a strong country in science and technology, it is necessary to encourage and protect fair competition. In recent years, disputes over technical secrets caused by employee “job hopping” have occurred frequently, especially some newly established enterprises have illegally seized other people’s technology, personnel and resources in order to gain competitive advantages quickly, seriously disrupting the market order. The right holder in this case is one of the largest private automobile companies in my country. As early as 2014, it used its traditional models to develop, trial-produce, and produce hybrid and pure electric vehicles, made huge R&D investments, and has achieved initial R&D results. In order to gain competitive advantages quickly, competitors have poached senior management and technical R&D personnel related to the right holder on a large scale, and used the technical secrets mastered by the right holder’s former employees to apply for patents, manufacture and sell related models.
The outstanding feature of this case is that it is a case of infringement of technical secrets caused by the organized and planned large-scale poaching of new energy vehicle technical personnel and technical resources by improper means. On the basis of the overall judgment of the infringement of technical secrets, the People’s Court applied double punitive damages in accordance with the law and awarded more than 640 million RMB, setting a new record for the amount of compensation awarded in domestic intellectual property infringement lawsuit. More importantly, the trial of this case has always been based on the judicial concept of protecting innovation in an innovative way, and has made pioneering explorations in the specific way, content, scope of civil liability for stopping infringement, and the calculation standard of delayed performance of non-monetary payment obligations. After the judgment was made, the infringer took the initiative to perform the non-monetary obligations determined by the judgment on time. As a typical case of the People’s Court protecting scientific and technological innovation in accordance with the law, this case not only effectively cracked down on malicious infringement of intellectual property rights, actively regulated and guided enterprises to operate in good faith and in accordance with the law, but also helped to stimulate the innovation and creation of enterprises, help develop new quality productivity, promote high-quality development of new industries and new fields, and promote the creation of a business environment that respects originality, legal operation, and fair competition.
The original text is available here (Chinese only).
Céline Dion Calls Out AI-Generated Music Featuring Her Voice Without Permission
Céline Dion Calls Out AI-Generated Music Featuring Her Voice Without Permission. Céline Dion is making it clear that the AI-generated music circulating online, which claims to feature her voice, is unauthorized and “fake.” In a statement shared on her Instagram on March 7, 2025, the Grammy-winning singer spoke out against the growing trend of AI […]
CJEU Recognizes Cross-Border Jurisdiction of National Courts, Long-Arm Jurisdiction of UPC
The Court of Justice of the European Union (CJEU) issued a decision significantly expanding the capabilities of both the Unified Patent Court (UPC) and the national courts in EU Member States to issue cross-border injunctions and adjudicate on patent infringement acts in countries (seemingly) outside their respective jurisdiction. Case C-339/22 (CJEU, Grand Chamber Feb. 25, 2025) ECLI:EU:C:2025:108.
Background
German company BSH Hausgeräte GmbH owns a European patent that is validated in several EU Member States and non-EU countries such as Turkey. BSH sued Swedish company Electrolux AB before a Swedish court for infringement of all national parts of the European patent (including the Turkish part).
Electrolux argued that the parts of the patent validated outside Sweden were invalid and that the Swedish court accordingly lacked jurisdiction to rule on these infringement claims. Electrolux relied on Article 24(4) of Regulation (EU) 1215/2012, the Brussels I bis Regulation, which confers exclusive jurisdiction for questions of patent validity on the courts of the state where a patent is registered.
The Swedish court of first instance declared that it did not have jurisdiction to rule on infringement of any non-Swedish parts of the patent. BSH appealed, and the Swedish Court of Appeal referred key questions to the CJEU about the interplay between Articles 4(1) and 24(4) of the Brussels I bis Regulation. Article 4(1) of the Regulation grants the courts of EU Member States general jurisdiction over all infringement actions committed by a person or company domiciled in their territory (regardless of where the infringement occurred). One of the relevant questions in this case was whether, in light of Article 24(4) of the Regulation, the court hearing the patent infringement action loses jurisdiction when an invalidity defense is raised.
Long-Arm Jurisdiction and Invalidity Defense
The CJEU clarified that Article 24(4) of the Regulation must be interpreted narrowly. According to the CJEU, the “validity of patents” mentioned in Article 24(4) of the Regulation only pertains to validity challenges that would lead to the annulment of the patent with effect erga omnes. Such erga omnes validity proceedings must still be brought before the courts of the forum of registration (e.g., the German Federal Patent Court in the case of the German part of a European patent). However, the CJEU considers that Article 24(4) of the Regulation does not apply to an inter partes invalidity defense raised in patent infringement litigation. Consequently, according to Article 4(1) of the Regulation, a court of an EU Member State in which the infringement case is being heard can decide on patent infringements in another EU Member State or in a third (non-EU) country and does not lose its jurisdiction if an invalidity defense is raised. Patent proprietors can therefore obtain cross-border injunctions in national courts of EU Member States (as well as before the UPC, even in states that do not take part in the UPC), and the courts remain jurisdictionally competent even if the infringer imposes an invalidity defense.
Where a third country outside of the European Union is concerned (e.g., the United Kingdom, Switzerland, or Turkey), the EU infringement court may even have jurisdictional competence to rule on an invalidity defense with inter partes effect. This means that a defendant can obtain a decision dismissing the infringement action on the basis of its invalidity defense (but not resulting in the patent being revoked in whole or in part, as there is no erga omnes effect of such invalidity decision).
Practical Implications
This decision marks a shift from the CJEU’s previous jurisprudence, according to which a cross-border injunction was blocked if the defendant raised an invalidity defense. The decision will also have significant implications for global patent litigation strategies:
Defendants cannot simply escape the forum chosen by the patentee by raising an invalidity defense. They may still file a separate nullity action in the country in which the patent or the relevant national part of a European patent is registered, but the EU infringement court will retain jurisdiction over the question of whether the defendant infringed the patent.
Patent proprietors can sue any defendant based in the European Union for patent infringement in any country (potentially worldwide) before the national courts of domicile. The question of patent infringement would then have to be decided on the basis of the applicable foreign law. This could require multinational litigation teams and expert opinions on foreign law (on matters such as claim construction) as well as possible uncertainty as to how an EU national court might interpret and apply foreign law, such as US or Chinese law. At least in principle, the CJEU’s decision allows EU courts to rule on patent infringement cases globally.
The owner of a non-opted-out European patent can now sue any defendant domiciled in a UPC contracting state for patent infringement, even with regard to infringing acts in European Patent Convention states that are not part of the UPC system (e.g., Spain or Turkey). There is already precedent on this issue (published even before the CJEU decision) in the decision of the UPC Local Division Düsseldorf of January 28, 2025, in the case UPC_CFI_355/2023. Here, the UPC recognized its long-arm jurisdiction regarding the alleged infringement of a European patent in the United Kingdom, even though an invalidity defense was raised and even though the United Kingdom is not part of the UPC system.
While the CJEU granted extensive jurisdiction to national courts and the UPC, it accepted that the infringement court must consider a nullity action in another EU Member State, which may lead to a stay of the infringement proceedings – in particular where the national court sees a “reasonable, non-negligible possibility of that patent being declared invalid” in the pending nullity action. As a result, defendants may have to file multiple nullity actions simultaneously before national courts if a patent owner decides to bring an action for patent infringement in several countries before only one national court. This could exert significant pressure on the defendant, which would have to advance considerable corresponding legal costs.
Practice Note: The CJEU decision strengthens the UPCs power to rule on allegations of infringement occurring in non-UPC countries. However, it also allows national courts in the EU to compete with the UPC in certain cross-border cases, particularly where a defendant domiciled in one country infringes in several countries. In its ruling, the CJEU confirmed the long-arm jurisdiction of both the national courts in the EU Member States and the UPC, and confirmed that raising an invalidity defense does not remove the jurisdiction of the infringement court.
A patent proprietor now can seek a cross-border injunction from a national court in the European Union without the risk of having several parts of its asserted European patent invalidated in a single counterclaim for revocation as in the UPC, but with a greater risk of a stay of infringement proceedings. Accordingly, the UPC has become an even more attractive venue for patent owners but could face additional competition from national courts. Patent proprietors will now be able to choose between EU national courts and the UPC when bringing infringement actions concerning multiple national designations and seeking cross-border injunctions, which translates into increased forum shopping possibilities. The CJEU’s decision may also lead to parallel proceedings in multiple jurisdictions, increasing the complexity of litigation for both parties.
This is where the UPC offers less costly and faster decisions. Because the CJEU confirmed the UPC’s competence to adjudicate on infringement issues related to European patents validated in non-UPC countries (such as the United Kingdom, Spain, Switzerland, and Turkey), the UPC is the more attractive option, especially for patentees with global patent portfolios. Overall, the CJEU’s decision strengthened the role of the UPC in European patent litigation but also introduced new dynamics that may influence cross-border patent litigation strategies.
The decision strengthens the relevance of EU-based courts in global patent litigation and underscores the need for cross-border strategies. Only time will tell whether non-EU courts will also affirm long-arm jurisdictions.
Premier Li Qiang Delivers China’s 2025 Work Report – Strengthen the Protection of Intellectual Property
On March 5, 2025, Premier Li Qiang delivered the 2025 government work report on behalf of the State Council at the third session of the 14th National People’s Congress. The work report set up economic and development tasks for 2025 providing insights on how China plans to achieve its economic goals. Excerpts relating to science, technology, and intellectual property follow. More insight into intellectual property goals for 2025 will presumably follow in the Supreme People’s Court’s work report scheduled for March 8, 2025.
The opening ceremony of the third session of the 14th National People’s Congress was held in the Great Hall of the People in Beijing.
The first part of the report, the 2024 work report, mentioned:
We will vigorously promote innovation-driven development and promote the optimization and upgrading of the industrial structure. We will advance the construction of a strong country in science and technology , fully launch and implement major national science and technology projects , accelerate the improvement of major science and technology infrastructure systems , and strengthen the training of top innovative talents .
Part II, the overall requirements and policy orientations for economic and social development in 2025, mentions:
Promote the integrated development of scientific and technological innovation and industrial innovation .
Part III of the 2025 government work tasks mentioned:
We will develop new quality productive forces in accordance with local conditions and accelerate the construction of a modern industrial system. We will promote the integrated development of scientific and technological innovation and industrial innovation , vigorously promote new industrialization, expand and strengthen advanced manufacturing, actively develop modern service industries, and promote the accumulation of new momentum and the renewal and upgrading of traditional momentum.
Cultivate and expand emerging industries and future industries. Deepen the integrated cluster development of strategic emerging industries. Carry out large-scale application demonstration actions for new technologies, new products and new scenarios, and promote the safe and healthy development of emerging industries such as commercial aerospace and low-altitude economy. Establish a mechanism for the growth of investment in future industries, and cultivate future industries such as biomanufacturing, quantum technology, artificial intelligence, and 6G . Deepen the pilot program for the integrated development of advanced manufacturing and modern service industries, and accelerate the development of service-oriented manufacturing. Strengthen the overall layout of industries and capacity monitoring and early warning, and promote the orderly development of industries and healthy competition. Accelerate the innovative development of national high-tech zones. Gradual cultivation of innovative enterprises , promote the development and growth of specialized, refined and new small and medium-sized enterprises, support the development of unicorn enterprises and gazelle enterprises , and allow more enterprises to accelerate in new fields and new tracks.
Stimulate the innovative vitality of the digital economy. Continue to promote the “artificial intelligence +” action , better combine digital technology with manufacturing advantages and market advantages, support the widespread application of large models, and vigorously develop a new generation of intelligent terminals such as intelligent networked new energy vehicles, artificial intelligence mobile phones and computers, and intelligent robots, as well as intelligent manufacturing equipment. Expand the large-scale application of 5G, accelerate the innovative development of the industrial Internet, optimize the national computing power resource layout, and create a digital industry cluster with international competitiveness. Accelerate the improvement of the basic data system , deepen the development and utilization of data resources, and promote and standardize the cross-border flow of data. Promote the standardized and healthy development of the platform economy , and better play its positive role in promoting innovation, expanding consumption, and stabilizing employment.
We will implement the strategy of rejuvenating the country through science and education, and improve the overall efficiency of the national innovation system. We will insist on innovation-driven development, promote education development, scientific and technological innovation, and talent cultivation in an integrated manner, and build a solid foundation and strategic support for China’s modernization.
Promote high-level scientific and technological self-reliance and self-improvement. Give full play to the advantages of the new national system , strengthen key core technology research and development and cutting-edge and disruptive technology research and development, and accelerate the organization and implementation of major scientific and technological projects . Optimize the layout of national strategic scientific and technological forces, promote the reform of scientific research institutes, explore new scientific research organization models of national laboratories, and enhance the radiation and driving capacity of international and regional scientific and technological innovation centers. Promote the tilt of scientific and technological expenditure towards basic research, improve the investment mechanism that combines competitive support with stable support, and improve the degree of organization of basic research. Give full play to the leading role of science and technology leading enterprises, strengthen the deep integration of industry, academia and research led by enterprises, and institutionally guarantee that enterprises participate in national scientific and technological innovation decision-making and undertake major scientific and technological projects. Improve the allocation and management and use mechanism of central fiscal science and technology funds. Improve the support policies and market services for the transformation of scientific and technological achievements, promote the reform of empowerment of official scientific and technological achievements and separate asset management , and improve the efficiency of scientific and technological achievements transformation. Strengthen the protection and application of intellectual property rights. Accelerate the construction of concept verification, pilot verification and industry common technology platforms. Improve the differentiated supervision system of venture capital funds, strengthen policy-based financial support, accelerate the development of venture capital, and strengthen patient capital. Expand scientific and technological openness and cooperation. Strengthen science popularization work and improve citizens’ scientific literacy. Carry forward the spirit of scientists and promote the formation of an innovative environment that encourages exploration and tolerates failure.
The full text is available here (Chinese only).