Jurisdictional headaches for registered designs


Michael Lantos

In several European Union member states, national laws for patent, utility model and design protection permit non-infringement proceedings.

In such proceedings, the petitioner submits a particular technical solution (be it an apparatus, a method or a design) to determine whether it falls within the scope of a particular granted right or not.

If the petition is successful, the technical solution is deemed not to fall within the scope of the patent and the rights owner is prevented from initiating an infringement proceeding. The main benefit of non-infringement proceedings lies in substantially decreasing the risk to the petitioner.

If a non-infringement proceeding is underway and the rights owner initiates an infringement proceeding, the competent court has to suspend the infringement proceeding until it has decided on the non-infringement proceeding.

non-infringement proceedings, EU