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How the USPTO’s AI Inventorship Reset Changes Patent Portfolio Strategy for Companies Building with Generative AI

Vaibhavi Kukreti — Thu, 25 Jun 2026 10:13:04 +0000

Introduction

For nearly two years, companies building products with generative AI had a specific framework to navigate inventorship decisions: the Biden-era February 2024 USPTO guidance on AI-assisted inventions. It introduced a ‘significant contribution’ analysis — a structured framework for assessing when the involvement of an AI system in the inventive process affected inventorship determination. It wasn’t perfect, but it gave practitioners something to work with.

On November 28, 2025, the USPTO rescinded it. The revised guidance is straightforward: AI systems are tools, not inventors. The traditional conception standard — a natural person must conceive each claimed invention — applies regardless of how much AI was involved in the process. No separate AI-specific analysis. No Pannu factor framework for evaluating AI contributions. The standard that applied before February 2024 applies again now.

For companies with existing or pending patent portfolios that were navigated under the 2024 framework, the reset has specific implications. Some inventorship determinations may need to be revisited. Some pending applications may need claim structure review. And the documentation practices that the 2024 framework encouraged — tracking human vs. AI contributions — are now more important, not less, because the burden of demonstrating human conception falls entirely on the applicant with no framework to assist the analysis. This article covers what changed, what needs to be reviewed, and how to build a patent portfolio strategy that holds up in the post-reset environment.

What the November 2025 USPTO Guidance Actually Says

Let’s be precise about what was rescinded and what wasn’t. The November 2025 guidance rescinds the February 2024 Inventorship Guidance for AI-Assisted Inventions and removes the Pannu factor analysis that had been applied to AI inventorship questions under that framework. It does not change the fundamental inventorship standard. What it changes is the AI-specific overlay that the 2024 guidance had built around it.

February 2024 framework (rescinded): AI-specific ‘significant contribution’ analysis required. Practitioners assessed whether AI contributions were significant enough to affect inventorship. Structured Pannu factor framework provided guidance on how to evaluate human vs. AI contributions to each claim. Created a separate analytical pathway for AI-assisted inventions.

Post-November 2025 standard: No AI-specific analysis. The traditional conception standard applies: a natural person must form a definite and permanent idea of the complete and operative invention in their mind. AI systems are laboratory equipment or research databases — they assist the inventive process but cannot conceive inventions. If the human contributor’s involvement amounts to merely running an AI system and taking its output without meaningful creative selection or modification, that is unlikely to meet the conception standard.

The practical test remains unchanged: did the named human inventor(s) conceive the claimed invention? Conception means the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention. In an AI-assisted workflow, the question is whether the human inventor’s contribution amounts to genuine conception — selecting, modifying, refining, and directing the AI’s output toward a specific inventive idea — or whether the human merely prompted the AI and accepted what it produced.

That line has always existed. The 2024 framework provided structure for navigating it. The post-reset environment removes that structure and leaves the determination to the traditional standard, applied case by case.

The Documentation Imperative: Why Internal Records Now Carry More Weight

The 2024 framework provided a structured analytical pathway for AI inventorship decisions. Without it, the burden of demonstrating human conception sits entirely on the applicant — supported by internal documentation that the USPTO or a challenger in litigation can scrutinise.

This is not a new requirement. Invention records have always been important. What’s new is the specific evidentiary gap the 2024 rescission creates: companies that relied on the 2024 framework’s structured analysis to support their inventorship determinations are now operating without that framework. The internal records that document human conception — or that should document it — are the only thing that remains.

Here’s what those records need to show for an AI-assisted invention to withstand scrutiny:

What the AI produced. The specific outputs — text, code, designs, molecular structures, whatever the AI generated — should be documented at the time of generation. Screenshots, log files, prompt-output pairs. The record should show what the AI contributed before human engagement.

What the human inventor contributed. The record should show what the human inventor selected from the AI output, what they modified, what they discarded, and what creative or technical judgment they applied in directing the AI toward the claimed inventive concept. This is the conception evidence — the documentation that the human formed a definite and permanent idea of the invention, not just ran a prompt and accepted the result.

The inventive concept that the human conceived. The invention disclosure form should clearly articulate the inventive concept — the specific technical advance that the patent will protect — in terms that reflect the human inventor’s understanding and contribution, not just a description of the AI’s output.

The connection between AI output and human conception. The chain from what the AI produced to what the human inventor conceived and claimed should be traceable in the internal record. If an examiner or a litigation opponent asks ‘how did the human inventor conceive claim 1?’ the documentation should provide a clear, specific answer.

Portfolio Audit: Reviewing Patents Filed Under the Biden-Era Framework

Companies that have existing patents or pending applications that were filed, prosecuted, or inventorship-determined under the 2024 framework need to assess those assets under the post-reset standard. The rescission doesn’t automatically invalidate existing patents. But it does create a different lens for evaluating inventorship correctness.

For patent portfolio analysis purposes, the review should cover three categories:

Patents granted under the 2024 framework where AI played a significant role. Identify patents in your portfolio where (a) AI tools were extensively used in the inventive process and (b) the inventorship determination relied on the 2024 framework’s structured analysis. Assess whether the named human inventors meet the traditional conception standard without the 2024 framework’s support. Where inventorship appears correct under the traditional standard, document why. Where it may not be, consider whether correction is appropriate and what the risk profile of leaving it uncorrected is.
Pending applications in prosecution where inventorship may need revisiting. Applications that are still pending — not yet granted — can be corrected before grant more straightforwardly than granted patents. Identify pending applications where the inventorship determination relied on the 2024 framework and assess whether the traditional standard is met. The pre-grant window is the lower-risk opportunity to correct if needed.
Applications where AI contribution was overstated or understated. The 2024 framework created two-directional risk: some companies may have attributed inventorship to human contributors who didn’t meet the conception standard (overstated human contribution), while others may have excluded human contributors whose contribution genuinely met the standard but was framed as ‘AI assistance’ (understated human contribution). Both directions of error need to be assessed.

“The rescission of the 2024 guidance doesn’t change what the right inventorship answer is — it changes the framework that was being used to get there. Companies that arrived at correct inventorship determinations under the 2024 framework are fine. Companies that relied on the 2024 framework’s structure to support determinations that don’t hold up under the traditional conception standard have a problem.”

Filing Strategy: Building a Portfolio That Holds Up Post-Reset

Going forward, AI-assisted patent portfolio strategy needs to be built around the traditional conception standard — without the 2024 framework’s structural support. Here are the five adjustments that matter most for drafting patent applications for AI-assisted innovations under the post-reset environment.

1. Structure claims around human-conceived inventive concepts — Claims should be directed to the specific inventive contribution of the human inventor — the technical advance they conceived, directed, or selected from AI-assisted exploration — not the AI’s output in general. Claims structured around specific human inventive contributions are more defensible under the conception standard than claims that describe the AI’s output without a clear line to human inventive decision-making.

2. Document the inventive contribution chain for every AI-assisted application — Before filing, create an internal record showing the path from AI assistance to human conception: what the AI produced, what the human inventor selected or modified, what creative or technical judgment the human applied, and what the resulting inventive concept is. This documentation is the evidence base for inventorship decisions and for defending those decisions in prosecution or litigation.

3. Consider trade secret protection for AI-generated outputs that don’t meet the conception standard — If the commercial differentiator is an AI-generated output that doesn’t represent meaningful human conception — a model architecture, a discovered compound, a generated design — trade secret protection may be more appropriate than patent protection. Patent disclosure requires sufficient human conception to support inventorship. Where that standard isn’t met, filing anyway creates invalidity risk.

4. Review inventorship on pending applications before grant — Pre-grant inventorship correction is significantly simpler than post-grant correction. For pending applications where inventorship was determined under the 2024 framework, assess under the traditional standard before grant and correct if needed. The correction cost is low before grant. After grant, it requires a formal proceeding.

5. File continuation applications structured around clearly human-conceived claims — For existing patents covering AI-assisted technology where the original claims were structured under the 2024 framework, continuation applications can be filed with claims more clearly directed to human-conceived inventive concepts. This builds a stronger portfolio foundation for the post-reset environment while preserving the priority date of the original filing.

The Broader Context: How Other Jurisdictions Handle AI Inventorship

The USPTO’s post-reset position — AI as tool, human conception required — is consistent with the approach taken by every major patent jurisdiction. Understanding each one matters for companies building global AI-assisted patent portfolios.

EPO: Technical character required, AI cannot be inventor. The EPO requires that patents cover a technical invention — AI-related applications must demonstrate a technical character beyond pure mathematical methods. The EPO has consistently held that only natural persons can be inventors (confirmed in the Dabus applications). European AI patent strategy needs to demonstrate a specific technical effect and ensure human inventors are properly identified.
China CNIPA: Natural persons only — now explicitly required. As covered earlier in this series, the January 2026 CNIPA guidelines explicitly ban AI systems, entities, or groups from being listed as inventors, and require natural persons with verifiable identity information. China’s position aligns with the post-reset USPTO standard but goes further in requiring explicit identity verification.
UK: Dabus cases and their aftermath. The UK Supreme Court confirmed in Thaler v. Comptroller-General that AI systems cannot be inventors under the Patents Act 1977. The inventor must be a natural person. AI-generated inventions with no human inventive contribution are not patentable in the UK under current law.
Australia: Recent alignment with international consensus. The Full Federal Court of Australia reversed the earlier decision that allowed an AI to be listed as inventor, bringing Australia into alignment with the international consensus: only natural persons can be inventors.

The global picture is consistent: no major patent jurisdiction allows AI inventorship. Companies building global AI-assisted patent portfolios need to ensure that human conception is documented and defensible in every jurisdiction they file in — not just the US.

How Our Portfolio Analysis Service Supports the Post-Reset Environment

Our patent portfolio analysis service covers AI-assisted patent portfolio reviews in light of the November 2025 USPTO guidance reset — identifying patents and applications where inventorship may need to be revisited, assessing claim structure against the traditional conception standard, and recommending continuation or correction strategies where appropriate.

For technology companies and startups building AI-intensive product portfolios, we structure portfolio analysis engagements around the specific R&D workflows where generative AI is integrated — mapping the human inventive contribution at each stage of the workflow against the traditional conception standard. The goal is to identify where the portfolio is solid, where it carries inventorship risk, and where filing strategy needs to be adjusted to build on the post-reset foundation rather than the rescinded 2024 framework.

For companies with pending applications still in prosecution, we provide pre-grant inventorship review — the lower-cost window to identify and correct inventorship before grant locks in a potentially vulnerable determination.

Building a patent portfolio with generative AI in your R&D workflow? The November 2025 USPTO reset means the 2024 framework you may have been relying on no longer applies. Our portfolio analysis service maps your AI-assisted inventions against the traditional conception standard — and identifies what needs to change. → Contact Us

Conclusion: The Takeaway

The November 2025 USPTO guidance reset is not a minor administrative update. It removes a framework that technology companies and their patent counsel had been using for nearly two years to navigate inventorship decisions for AI-assisted inventions. In the post-reset environment, the traditional conception standard applies — without structural support, without a separate AI analysis pathway, and with the full burden of demonstrating human conception sitting on the applicant’s internal documentation.

For companies that navigated inventorship correctly under the 2024 framework — that documented genuine human conception and applied the standard carefully — the reset changes little in practice. For companies that relied on the 2024 framework’s structure to support determinations that don’t hold up under the traditional standard, the reset creates inventorship risk they may not have identified yet. The portfolio audit is the starting point for knowing which category you’re in.

AI is a powerful tool for innovation. The patent system still requires a human inventor. Making sure those two realities align in your portfolio documentation is the work that needs to happen now.

The post How the USPTO’s AI Inventorship Reset Changes Patent Portfolio Strategy for Companies Building with Generative AI appeared first on TT CONSULTANTS.

Ex Parte Injunctions in Patent Cases: What the Courts’ Cautious New Standard Means for Product Launches

Vaibhavi Kukreti — Thu, 25 Jun 2026 08:15:53 +0000

Introduction

Patent enforcement in the Nordic market doesn’t always make the front page of IP publications. The cases that dominate discussion are in EDTX, Düsseldorf, and increasingly the UPC. Denmark, Sweden, and Norway operate at a lower volume — but for companies launching products in Scandinavia, the enforcement environment matters, and it has specific characteristics that distinguish it from both the US and the major continental European venues.

In April 2025, the Danish Maritime and Commercial High Court issued a ruling in case BS-19037/2025 that clarifies the threshold for ex parte injunctions in patent cases — proceedings where an injunction can be granted without the defendant being heard first. The ruling establishes a very high bar, even in cases involving repeated infringement claims and an existing enforceable injunction against the same defendant.

For product companies planning Nordic market launches, the ruling is relevant in two directions: it confirms that Denmark will not easily grant ex parte patent orders that disrupt product launches without notice, and it underscores that the court’s procedural fairness standards are robust. That’s good news for well-prepared market entrants. It doesn’t mean Danish patent enforcement isn’t real. It means it operates differently from Germany. Understanding that difference is what effective FTO analysis for the Nordic market requires.

What an Ex Parte Injunction Is — and Why It Matters for Product Launches

An ex parte injunction is granted without notice to the defendant. The court hears only the patent holder’s side before issuing the order — the defendant is not given the opportunity to respond. In patent cases, this means a product can be ordered off the market before the alleged infringer has had any opportunity to contest the claim.

This is the most commercially disruptive enforcement tool in a patent holder’s arsenal. An inter partes preliminary injunction — where both parties are heard — takes several months. An ex parte order can be obtained within days or weeks of filing. For a product launched into a new market, an ex parte injunction can create immediate market disruption: product pulled from shelves, distribution channels frozen, customer relationships disrupted — all before the alleged infringer has been heard by the court.

For FTO strategy, ex parte injunction risk is a specific component of the launch risk assessment that sits alongside the underlying question of whether infringement exists. Even a product with a credible freedom to operate position faces ex parte risk if the jurisdiction grants such orders readily and the patent holder is willing to move quickly. Germany is notorious for this. Denmark, as the April 2025 ruling confirms, is not.

The April 2025 Danish Ruling: BS-19037/2025

Here’s what the case involved and what the court decided.

The court and its role: The Danish Maritime and Commercial High Court (Sø- og Handelsretten) is the first-instance patent court in Denmark. It handles both infringement actions and preliminary injunction applications in patent disputes. The court has specialised IP expertise and is the entry point for all patent enforcement proceedings in Denmark.

The case: In BS-19037/2025, a patent holder applied for an ex parte preliminary injunction. Significantly, there was already an enforceable injunction against the same defendant from prior proceedings. The patent holder argued that new infringement was occurring — that the defendant had resumed or continued infringing conduct in violation of the existing order — and sought an ex parte order to prevent the ongoing conduct without giving the defendant prior notice.

The decision: The court declined to grant the ex parte order. Even with an existing enforceable injunction and the allegation of renewed infringement, the court held that the threshold for excluding the defendant from the proceedings — the prerequisite for any ex parte order — had not been met. The defendant’s right to be heard was treated as a fundamental procedural protection, overridden only in circumstances so exceptional that notice itself would defeat the purpose of the order.

The principle: The ruling reflects a consistent Danish judicial philosophy: procedural fairness is a cornerstone of the legal system, and commercial disruption without adversarial process requires an exceptionally high justification. Having a prior injunction against the same defendant, and alleging violation of that injunction, is not sufficient justification — even combined — to bypass the defendant’s right to respond before an ex parte order issues.

“The April 2025 ruling doesn’t mean Danish courts won’t enforce patents. It means they won’t do it without giving the other side a chance to be heard — except in circumstances that are genuinely extraordinary. That’s a meaningful protection for companies entering the Danish market with a credible freedom to operate position.”

How Danish Patent Enforcement Actually Works

Understanding the ex parte ruling requires understanding the standard Danish enforcement framework that it sits within.

First-instance proceedings at the Maritime and Commercial High Court. All patent infringement actions in Denmark are filed before the Maritime and Commercial High Court. The court has specialised IP panels with technical expertise. Proceedings are conducted in Danish, though international parties regularly participate through Danish counsel.

Preliminary injunction process — inter partes. For most preliminary injunction applications in patent cases, the court hears both parties: written submissions followed by an oral hearing. A decision typically issues within 2–4 months of filing. The applicant must demonstrate (1) a valid patent, (2) a reasonable likelihood of infringement, and (3) that the balance of hardships favours the injunction. The third element — balancing of hardships — gives the court room to consider the commercial impact on both sides.

Main proceedings and damages. Following a preliminary injunction, main proceedings must be initiated to confirm the injunction and pursue damages for infringement. Danish damages awards have historically been modest by international standards, though they are calculated based on lost profits or a reasonable royalty, whichever is greater.

Validity challenges as counterclaims. Validity can be challenged as a counterclaim in infringement proceedings or through separate nullity proceedings before the Danish Patent and Trademark Office (DKPTO). Unlike Germany’s bifurcation model, Danish courts will hear both infringement and validity in the same proceeding if the defendant raises a nullity counterclaim — giving a more integrated process.

What the Ruling Means for FTO Strategy in the Nordic Market

The April 2025 ruling has specific and practical implications for FTO strategy. Here’s how to read it.

The cautious standard is good news for well-prepared entrants. A company that has conducted a thorough freedom to operate analysis for the Danish market, has a credible non-infringement or invalidity position on the relevant patents, and can document its FTO basis in writing is in a strong position relative to an ex parte injunction risk. Denmark’s high threshold for ex parte orders means that a patent holder who wants to stop a well-prepared market entrant before launch needs to go through the inter partes preliminary injunction process — which gives the entrant the opportunity to be heard and to present its FTO position. That’s a material procedural protection.

But inter partes injunctions remain available — and real. The April 2025 ruling addresses the ex parte threshold specifically. It does not change the availability or standards for inter partes preliminary injunctions in patent cases. A patent holder with a valid patent and a credible infringement argument can still obtain a preliminary injunction in Denmark — the process is simply adversarial rather than ex parte. For companies launching products in Denmark where a competitor holds potentially blocking patents, the inter partes preliminary injunction risk is the one that needs to be assessed in the FTO analysis.

Pharmaceutical and medtech: Denmark’s active enforcement track record. Denmark has a well-established enforcement track record in pharmaceutical and medical technology patent disputes. The Danish patent courts have experience with SPC-related disputes, biosimilar market entry cases, and medical device infringement claims. For pharma and medtech companies entering the Danish market, the cautious ex parte standard provides protection at launch — but the inter partes preliminary injunction environment is active and should be assessed thoroughly in any FTO analysis.

The Nordic FTO Picture: Denmark, Sweden, Norway

A product launched into the Nordic market doesn’t sit in a single jurisdiction — and the patent enforcement environment differs meaningfully across the three primary Nordic markets. Here’s what each one looks like for FTO purposes.

Denmark — Cautious ex parte standard (confirmed April 2025), but active inter partes preliminary injunction enforcement. Particularly active in pharmaceuticals, medical devices, and clean energy technology. The Maritime and Commercial High Court is specialised and efficient. FTO analysis needs to cover the Danish patent register, EPO-granted patents validated in Denmark, and SPC extensions for pharma products.

Sweden — Stockholm District Court handles patent disputes as first instance. Sweden is home to Ericsson and a significant concentration of telecoms and connectivity technology companies. SEP assertion activity is present in Stockholm given Ericsson’s home jurisdiction. Preliminary injunctions are available through the Patent and Market Court (PMD). FTO analysis for Swedish market entry needs to cover the Swedish patent register and the specific SEP landscape for connectivity-implementing products.

Norway — Norway is not an EU member but is a Lugano Convention signatory — relevant to UPC long-arm jurisdiction questions. Oslo District Court handles patent disputes. Norway has an active pharmaceutical patent enforcement track record, particularly in generic market entry cases. FTO analysis for Norwegian market entry needs to cover the Norwegian patent register and EPO-granted patents validated in Norway.

For companies planning pan-Nordic launches, the most common pitfalls in FTO analyses include treating the region as a single jurisdiction, scoping the FTO to one country while ignoring the others, and failing to account for the different preliminary injunction standards in each market. A Nordic FTO needs to be scoped as three separate jurisdictional analyses, not one.

How Our FTO Service Covers the Danish and Nordic Market

Our freedom to operate search service covers the Danish patent register, EPO-granted European patents validated in Denmark, and Scandinavian-specific patent databases for Swedish and Norwegian market analysis. Every Nordic FTO engagement covers each jurisdiction separately — Danish, Swedish, and Norwegian patent registers, EPO validations in each country, and SPC extensions for pharma and medtech products.

For the Danish market specifically, we structure FTO engagements to account for the April 2025 ex parte standard — assessing which competitor patents carry ex parte risk (low under the current standard) versus inter partes preliminary injunction risk (which remains real and active). The output isn’t just a patent clearance report. It’s a jurisdiction-specific injunction risk assessment that tells your team what enforcement mechanism is most likely for each potentially blocking patent, so you can plan your launch strategy accordingly.

Launching a product in Denmark or the Nordic market? The April 2025 ruling clarifies the ex parte standard — but inter partes injunction risk remains real. Our FTO service covers the Danish patent landscape and the specific enforcement risk profile for each potentially blocking patent. → Contact Us

Conclusion: The Takeaway

Denmark’s cautious approach to ex parte patent injunctions — confirmed in the April 2025 ruling — is meaningful for product companies entering the Nordic market. The procedural protection it provides at the point of launch is real: a patent holder wanting to stop a well-prepared market entrant before they’ve had a chance to be heard needs to go through adversarial inter partes proceedings, not a unilateral ex parte order.

That protection is conditional on preparation. A company that has conducted a thorough Denmark-specific FTO analysis, has a documented non-infringement or invalidity position on the potentially blocking patents, and can articulate that position to the court when given the opportunity to be heard is in a fundamentally better position than one that arrives at the market launch without that groundwork. The procedural fairness the Danish courts provide is only valuable if you’re prepared to use it.

Denmark enforces patents. It does so with procedural care. Understanding the difference between those two things is what effective Nordic FTO strategy looks like.

The post Ex Parte Injunctions in Patent Cases: What the Courts’ Cautious New Standard Means for Product Launches appeared first on TT CONSULTANTS.

Switzerland Is Revising Its Patent Act: What the Incoming Reforms Mean for Patent Landscape Strategy

Vaibhavi Kukreti — Wed, 24 Jun 2026 13:35:40 +0000

Introduction

Switzerland’s patent system hasn’t changed fundamentally in a generation. The Swiss Patent Act — governing domestic Swiss patents administered by the Federal Institute of Intellectual Property (IPI) — has operated largely unchanged while the surrounding European patent environment evolved significantly around it. The UPC launched. The CJEU issued cross-border injunction rulings. The EPO’s examination standards evolved. Swiss patent law stayed relatively still.

That’s changing. In March 2024, the Swiss Parliament adopted a partial revision of the Patent Act — the most significant update to Swiss domestic patent law in decades. The Federal Council submitted the fully revised Patent Ordinance for consultation in April 2025. The Federal Council is expected to approve the revised Ordinance in May 2026, with an anticipated effective date of January 1, 2027.

For companies operating in Switzerland’s most patent-intensive sectors — pharmaceuticals, medical technology, watchmaking, precision instruments, and specialty chemicals — the reform changes both what Swiss patent protection can achieve and what the competitive IP landscape looks like. This article covers the two changes that matter most for landscape strategy, the actions to take before the window closes, and what the post-reform Swiss patent environment will look like for each major sector.

What the Swiss Patent Act Revision Actually Changes

Two changes are operationally significant for patent landscape analysis and competitive IP strategy. The rest of the revision covers procedural clarifications and administrative updates that matter primarily to prosecution counsel.

Change 1: Protection Scope Aligned with EPO Standards

Current Swiss domestic patents operate under a slightly different protection scope standard than EPO-granted European patents validated in Switzerland. The difference is subtle but material in technology sectors where claim scope is commercially decisive — particularly pharmaceutical compound claims and medtech device claims where the boundary between infringing and non-infringing products is narrow.

The revised Act aligns Swiss patent protection scope with EPO standards. Swiss domestic patents will offer protection comparable to European patents for the first time — removing a long-standing asymmetry that has affected how Swiss domestic patents are valued relative to their European counterparts and how they factor into competitive landscape analysis.

For landscape analysis, this means the protection scope of Swiss domestic patents needs to be assessed using the EPO-comparable standard from January 2027 onwards. Patents that appeared narrower under the current Swiss standard may carry materially broader protection scope under the revised Act. Competitive landscapes built before the reform may underweight the scope of Swiss domestic patents held by competitors.

Current Swiss standard: Swiss domestic patents assessed under Swiss-specific protection scope standard. Slight asymmetry with EPO-granted European patents validated in Switzerland.

Post-2027 standard: Swiss domestic patents assessed under EPO-comparable scope standard. Protection coverage aligned with European patents. The asymmetry is removed.

Change 2: IPI Opposition Procedure Abolished — Direct FPC Appeals

The IPI currently offers an administrative opposition procedure for challenging granted Swiss domestic patents within 9 months of grant — a relatively accessible, lower-cost mechanism compared to Federal Patent Court nullity proceedings. Under the revised Act, this administrative opposition procedure is abolished. Validity challenges go directly to the Swiss Federal Patent Court.

The consequences for the competitive IP landscape are specific:

Weaker patents that would previously have been administratively opposed may survive longer. The IPI opposition was a fast, relatively low-cost route to challenging questionable Swiss domestic patents within 9 months of grant. Without it, marginal patents that an administrative opponent would have challenged are more likely to go unchallenged — at least until a market entrant or competitor decides the commercial stakes justify full FPC nullity proceedings.
The bar for validity challenges rises. FPC nullity proceedings are more expensive, more formal, and require more preparation than IPI opposition proceedings. The practical consequence: fewer validity challenges will be filed against Swiss domestic patents post-reform, and those that are filed will be by parties with serious commercial stakes in the outcome.
Swiss domestic patents become more defensively robust. A patent that survives in an environment where opposition is easier is a weaker signal of validity than one that survives where challenges are harder. Post-reform, a granted Swiss domestic patent that hasn’t been challenged carries a stronger presumption of validity — at least in practice.

Why Switzerland Matters as a Patent Jurisdiction

Switzerland is consistently ranked the world’s most innovative country. For European pharma innovators and IP strategists, Switzerland isn’t a secondary jurisdiction to monitor from a distance — it’s the home base of some of the world’s most commercially significant patent portfolios. Novartis, Roche, Lonza, Straumann, Sonova, and dozens of specialty pharma and medtech companies operate from Swiss IP foundations.

The Swiss patent landscape has two layers that together define the full IP picture: EPO-granted European patents validated in Switzerland (subject to the Swiss FPC, enforceable under Swiss law) and domestic Swiss patents granted by the IPI (a separate right, not equivalent to a validated European patent). Most competitive IP analysis focuses on the EPO layer and underweights the domestic Swiss patent layer. The reform’s scope alignment change makes that asymmetry more significant — post-reform, domestic Swiss patents carry protection comparable to their EPO counterparts. Ignoring the domestic layer means missing a material portion of the competitive IP picture.

How the Revision Changes Patent Landscape Analysis for the Swiss Market

The practical implication of the revision for patent landscape analysis is threefold.

The opposition abolition changes the landscape’s validity signals. In the current system, Swiss domestic patents that were filed and granted in the last decade had a 9-month window during which any party could file an administrative opposition. The absence of opposition during that window provides some signal — however imperfect — that the patent wasn’t considered sufficiently vulnerable to challenge. Post-reform, that signal disappears. All Swiss domestic patents granted after January 2027 will be unchallenged by default, not because they’re strong but because the low-cost challenge mechanism no longer exists. Landscape analysis of post-reform Swiss patents needs to factor in that the absence of challenge is less meaningful than it was under the current system.

Stronger protection scope changes competitive risk weighting. EPO-comparable scope means the Swiss domestic patents in your landscape may cover a broader range of competitive products than the current scope standard suggests. For competitive landscape analysis — particularly in pharma and medtech where product-to-claim mapping is central — the post-reform scope standard needs to be applied to identify the true competitive IP exposure from Swiss domestic patent holders.

The IPI opposition window is a now-or-never opportunity. For competitor patents that are currently within the 9-month IPI opposition window and that have validity vulnerabilities, the window closes permanently when the revised Act takes effect. Any Swiss domestic patent that could be challenged through IPI opposition needs to be identified and assessed before January 2027. After that date, the same challenge requires full FPC nullity proceedings — significantly more resource-intensive.

The Window That’s Closing: Act Before January 2027

The Federal Council is expected to approve the revised Ordinance in May 2026. That gives companies operating in the Swiss market approximately 7 months to act under the current rules before the revised Act takes effect. Here are the four actions that have a time-critical dimension:

Action 1: File IPI Opposition on Competitor Patents Now — Identify Swiss domestic patents held by competitors in your technology space that were granted within the last 9 months. Assess each for validity vulnerabilities. File IPI opposition on any patent that (a) poses a genuine competitive threat and (b) has a credible invalidity argument. After January 2027, this option is gone permanently. What previously required a relatively accessible administrative filing will require full FPC nullity proceedings.

Action 2: Review Pending Swiss Applications for Scope Alignment — For pending Swiss domestic patent applications, assess whether the claims are drafted to take full advantage of the EPO-comparable scope standard that will apply post-reform. Claims drafted under the current Swiss-specific standard may be narrower than the revised Act would permit. Applications still in prosecution may benefit from claim adjustments before the reform takes effect.

Action 3: Run a Pre-Reform Landscape of the Swiss Market — Commission a landscape analysis of the Swiss domestic patent space in your technology area before January 2027. This captures both the current protection scope of competitor patents and the IPI opposition history — which provides validity signals that will no longer be generated post-reform. The pre-reform landscape is a different document from the post-reform landscape, and both have distinct strategic value.

Action 4: Plan Swiss Market Entry Around the New Protection Standards — For companies planning Swiss market entry after January 2027, factor in that the domestic Swiss patents you’ll face carry EPO-comparable protection scope and are significantly less likely to have been validity-challenged than pre-reform patents. FTO analysis for post-reform Swiss market entry needs to account for the stronger protection standard.

Sector-Specific Implications: Pharma, MedTech, and Precision Technology

The reform’s practical impact isn’t uniform across Switzerland’s innovation sectors. Here’s how it plays out in the three most patent-intensive areas.

Pharmaceuticals. Swiss pharmaceutical patents — particularly compound claims and formulation patents — are among the most commercially significant in the Swiss domestic patent register. The scope alignment change matters most here: EPO-comparable scope for Swiss compound claims may extend protection to a broader range of pharmaceutical products than the current Swiss standard. For generic manufacturers and biosimilar developers planning Swiss market entry, the post-reform scope standard needs to be assessed for every blocking patent in the FTO analysis. SPC extensions are unaffected by the reform, but the underlying patent’s scope may change.
Medical technology. Swiss medtech companies — Straumann in dental implants, Sonova in hearing instruments, Ypsomed in drug delivery devices — hold significant domestic Swiss patent portfolios covering device designs, manufacturing processes, and software-integrated systems. The post-reform scope alignment means these portfolios may carry broader protection than their current Swiss-specific scope suggests. For international medtech companies selling into Switzerland, the FTO picture for post-reform Swiss domestic patents needs to be assessed under the new standard.
Precision technology and watchmaking. Switzerland’s watchmaking and precision instrument industry has a deep patent history in mechanical systems, materials, and manufacturing processes. The opposition abolition is particularly relevant here — many precision technology patents are filed by smaller companies that relied on the IPI opposition as a cost-effective mechanism for managing competitive validity challenges. Post-reform, the landscape in this sector may become less contested, with weaker patents surviving longer simply because the low-cost challenge mechanism no longer exists.

How Our Landscape Analysis Service Covers the Swiss Market

Our patent landscape analysis covers both layers of the Swiss IP landscape — EPO-granted European patents validated in Switzerland and domestic Swiss patents registered with the IPI — giving a complete picture of the competitive IP environment in any Swiss technology sector.

For companies with time-critical actions before January 2027, we structure engagements specifically around the IPI opposition window: identifying competitor patents within the 9-month opposition period, assessing validity vulnerabilities, and recommending action on patents that warrant pre-reform challenge. For companies planning post-2027 Swiss market entry, we provide landscape analysis applying the EPO-comparable scope standard that will govern the post-reform environment. The pre-reform and post-reform Swiss landscapes are genuinely different documents — and understanding why patent landscape analysis is strategically essential to business decisions is the starting point for using both effectively.

Switzerland’s Patent Act revision changes the competitive IP landscape for pharma, medtech, and precision technology. The IPI opposition window closes permanently in January 2027. Our landscape analysis covers both layers of Swiss patent protection — and identifies the actions that need to happen before the window does. → Contact Us

Conclusion: The Takeaway

The Swiss Patent Act revision is a generation-level change to a patent system that hasn’t changed fundamentally in decades. EPO-comparable scope means Swiss domestic patents will carry broader protection than the current standard allows. The abolition of IPI opposition means weaker patents will face fewer challenges and survive longer. Both changes affect how the Swiss patent landscape should be read and acted upon.

The Federal Council is expected to approve the revised Ordinance in May 2026. The effective date is January 1, 2027. The window to act under the current rules — particularly for IPI opposition filings on competitor patents with validity vulnerabilities — is measured in months, not years. The companies that identify the patents worth challenging and file before the window closes are the ones that preserve competitive options that won’t be available under the revised Act.

The landscape is changing. The question is whether you understand the current landscape well enough to act on it before it does.

The post Switzerland Is Revising Its Patent Act: What the Incoming Reforms Mean for Patent Landscape Strategy appeared first on TT CONSULTANTS.

When Your Competitor Files the Same Invalidity Arguments Twice: How to Build a Prior Art Case That Holds Up Under Repeat Attack

Vaibhavi Kukreti — Wed, 24 Jun 2026 09:59:40 +0000

Introduction

Here’s a scenario that plays out more often than it should. A patent holder wins an IPR proceeding. The challenger is estopped from raising the same prior art grounds in district court. Case closed — or so it seems. Then the challenger files an ex parte reexamination on related grounds. Or files a new IPR petition on different claims with a slightly different prior art combination. Or raises an independent invalidity defence in the district court litigation that runs in parallel. The patent that survived one challenge is now under attack again from a different angle.

Or flip the scenario: your company receives a patent assertion. You file an IPR petition. Under Director Squires’ centralised institution process, the petition is denied — Fintiv applies, the district court case is moving fast, and PTAB declines to institute. Now your invalidity case has to work in front of a jury in EDTX without the PTAB’s specialised patent judges, without the lower preponderance of evidence standard, and without the prior art strategy you were planning to develop post-institution.

Both scenarios have the same underlying requirement: a prior art case that was built comprehensively from the start, charted correctly, and documented in a way that holds up across multiple proceedings, multiple forums, and multiple attempts. This article covers how to build that case — in the specific environment of 2026, where IPR institution is uncertain, district court invalidity is the primary battleground, and the prior art investment you make first is the one that determines your leverage at every stage that follows.

The New Reality: Why the Initial Prior Art Search Is Now the Decisive Investment

The PTAB environment has changed significantly. As covered in our analysis of IPR and PGR strategies for patent invalidation, institution rates under Director Squires’ centralised process have dropped to approximately 37%. More than 63% of IPR petitions filed in 2025 were denied — and the denials are not random. They’re concentrated in cases involving parallel district court litigation (Fintiv), patents over six years old (settled expectations), and petitions that don’t clear the Director’s elevated practical threshold.

The staged approach that practitioners relied on for years is no longer reliable:

Old approach (pre-2025 PTAB): Run a targeted prior art search. File an IPR petition with your strongest few references. If instituted, develop the full invalidity case with additional art. Hold back secondary references for district court use.

New reality (2026 PTAB): With 63%+ denial rates, the IPR petition needs the strongest possible prior art from day one — because there may not be a second opportunity at PTAB. And if the petition is denied, that same prior art needs to hold up in district court under the Phillips claim construction standard, without the lower preponderance of evidence burden PTAB applies.

The consequence: the initial prior art search is now the decisive investment in any invalidity campaign. It sets the foundation for the IPR petition (if viable), feeds the district court invalidity contentions (if needed), and determines whether the ex parte reexamination (if deployed as a parallel or fallback track) has the prior art to succeed. Every subsequent proceeding draws on the quality of the prior art that was identified first.

Understanding IPR Estoppel: What You Can — and Can’t — Revisit

Estoppel is the most consequential constraint on repeat invalidity attacks — and the one most often misunderstood in terms of its practical scope.

Under 35 U.S.C. § 315(e), a petitioner who has obtained a final written decision in an IPR proceeding is estopped from asserting in district court or ITC that a patent claim is invalid on any ground that was raised — or that reasonably could have been raised — during the IPR. The operative phrase is ‘reasonably could have been raised.’ Courts interpret this broadly.

What ‘reasonably could have been raised’ covers in practice: all prior art references that a skilled searcher conducting a reasonable prior art search would have identified. This isn’t limited to the references you actually submitted in the IPR. It covers references you found but decided not to include. It covers references you would have found if you had run a comprehensive search. A decision to hold back secondary references for use in district court — because you planned to develop the invalidity case further post-institution — is a decision that may result in those references being estopped anyway.

The practical consequence for prior art strategy is significant:

Run the full prior art search before filing the IPR petition. The only way to know whether a reference is covered by estoppel is to know whether a reasonable search would have found it. Running a comprehensive search before the petition is filed gives you the complete picture — and the informed decision about which references to include.

Don’t hold back references you’re planning to use in district court. If the reference would have been found in a reasonable prior art search — and it almost certainly would have been — holding it back creates estoppel risk without any procedural benefit.

Consider ex parte reexamination for the references you can’t include in IPR. Ex parte reexamination is not subject to IPR estoppel. References used in ex parte reexam don’t create IPR-style estoppel for district court use. This makes ex parte reexam a valuable parallel track for secondary prior art.

Building a Prior Art Case That Holds Up in Both PTAB and District Court

The prior art case that works across both forums — and survives repeat challenges — is the one built to the higher standard from the start. Here’s what that looks like in practice.

Claim construction first — for both forums. PTAB applies the Phillips standard (plain and ordinary meaning as understood by a person of ordinary skill in the art) — the same standard used in district court. Build your claim construction map element by element before a single database is searched. The construction determines what prior art you need, and building it for district court standards means it holds up in both forums.
Multi-database, multi-language search. USPTO alone is not sufficient. The most powerful prior art — particularly in software, AI, wireless communications, and semiconductor technology — is frequently in Japanese (JPO/J-PlatPat), Korean (KIPO), German (DPMA), and Chinese (CNIPA) databases. A search that covers only English-language databases is structurally incomplete for any technology space with significant international R&D activity. Japanese and Korean patent documents in particular frequently predate their US counterparts in fast-moving technology sectors.
Non-patent literature as a primary search category, not an afterthought.
Physical products and prior public use — district court only. IPR is limited to prior art consisting of patents or printed publications. Physical products, prior commercial sales, and public use evidence are only available in district court invalidity proceedings — not at PTAB. If your invalidity case includes a strong product-based prior art argument, that argument needs to be developed and preserved for district court use, because it’s structurally excluded from IPR.
Element-by-element claim charts for every relevant reference. A prior art reference that’s found but not charted is nearly useless in litigation. Both PTAB panels and district court judges work from claim charts — the structured mapping of prior art reference elements to patent claim limitations. Every reference that could support an invalidity argument needs a chart, built before the petition or invalidity contentions are filed, in the format that counsel can work with directly under litigation deadlines.

“The prior art case built comprehensively the first time — multi-database, multi-language, NPL-inclusive, charted to district court standards — is the one that creates leverage at every stage of the invalidity campaign. The prior art case built in a hurry to meet an IPR deadline creates estoppel risk and leaves the district court case exposed.”

When Your Competitor Files the Same Arguments Twice: Defence Patterns

Understanding the specific patterns of repeat invalidity attack helps you design the prior art foundation to withstand each one.

Pattern 1 — IPR Filed, Denied Under Fintiv, District Court Proceeds: The most common pattern in 2025–2026. IPR petition filed within one year of complaint service. PTAB denies under Fintiv because the district court schedule is moving fast. The invalidity case shifts entirely to district court — same prior art, different forum, different procedural standards. The prior art case needs to have been built to district court standards from the start, because there’s no IPR institution to develop it further.

Pattern 2 — IPR Filed, Instituted, Partial Win, Remaining Claims in District Court: IPR is instituted but results in a final written decision that cancels some claims but upholds others. The district court litigation continues on the surviving claims. The estopped grounds can’t be reused. The prior art for the surviving claims needs to come from the comprehensive prior art foundation built before the IPR petition — the references that were identified but not included in the IPR submission.

Pattern 3 — Serial Challenges Across IPR, Ex Parte Reexam, and District Court: A patent holder wins IPR. The challenger files ex parte reexamination on related grounds (no estoppel applies). The district court litigation on surviving claims continues. Each challenge draws from the prior art foundation. A comprehensive initial search that identified all relevant references — and documented which forum each reference is appropriate for — is the only way to execute a multi-forum invalidity campaign coherently.

The Ex Parte Reexamination Strategy

Ex parte reexamination is the most underutilised tool in the current invalidity environment — and its specific characteristics make it particularly valuable in the post-Squires PTAB landscape.

No IPR-style estoppel. A failed ex parte reexamination does not bar district court invalidity arguments on the same prior art grounds. This is fundamentally different from a failed IPR, which creates broad estoppel. Ex parte reexam can be deployed, fail, and leave the district court invalidity case intact.
Anonymous filing. Ex parte reexamination can be filed anonymously through counsel. The patent holder doesn’t know who filed the request. For situations where maintaining strategic distance from the challenge is valuable, anonymous filing preserves that distance.
Can run in parallel with district court litigation. Unlike IPR, which creates Fintiv complications when parallel district court litigation is active, ex parte reexamination can run alongside district court proceedings. It applies prosecution pressure on the patent holder and creates a prior art record that can influence the district court invalidity analysis.
Useful for secondary prior art. References that weren’t included in the IPR petition — either because they were held back or discovered later — can be presented in ex parte reexamination without creating IPR estoppel. This makes ex parte reexam the appropriate vehicle for prior art that the IPR petition couldn’t accommodate.

How Our Patent Invalidation Search Service Is Built for the Current Environment

Our patent invalidation search service is structured around the IPR-and-district-court dual environment — delivering prior art that meets the standards of both PTAB proceedings and district court invalidity defences from a single comprehensive engagement.

Every engagement starts with claim construction under the Phillips standard before a single database is searched — the standard that applies in district court and, since the elimination of the broadest reasonable interpretation standard at PTAB, also in IPR proceedings. The search covers 15+ databases including USPTO, Espacenet, JPO (J-PlatPat), KIPO, WIPO PATENTSCOPE, and CNIPA, using CPC and IPC classification-based methodology rather than keyword-only search. NPL sources — academic databases, conference proceedings, technical standards — are covered as a primary search category, not an afterthought. Foreign language documents are reviewed by native-language analysts for the most commercially significant references.

The output is a court-ready invalidity report: element-by-element claim charts for every relevant reference, prosecution history analysis identifying the arguments made during examination that define the claim boundaries, and a clear mapping of which references anticipate under § 102 versus render obvious under § 103. The report is formatted to work in IPR petitions, ex parte reexam submissions, and district court invalidity contentions without reformatting. Because the invalidity campaign often runs across multiple forums — and the prior art case has to hold up in all of them.

The prior art case you build first determines your leverage at every stage — IPR petition, ex parte reexam, or district court invalidity defence. Our patent invalidation search delivers the comprehensive, court-ready prior art that holds up however many times the patent gets challenged. → Contact Us

Conclusion: The Takeaway

The patents worth invalidating are the ones that get attacked more than once. In IPR. In ex parte reexamination. In district court invalidity contentions. Across different combinations of prior art, different claim construction arguments, and different procedural standards. The invalidity campaign that succeeds across all of those challenges is the one built on a comprehensive prior art foundation from the start.

In 2026, with IPR institution rates at 37% and district court invalidity as the primary battleground, the prior art search that feeds the first filing is more important than at any point since the America Invents Act created IPR in 2012. The staged approach — targeted search, develop later if needed — creates estoppel risk and leaves the district court case exposed. The comprehensive approach — full multi-database, multi-language, NPL-inclusive search, charted to court standards before any petition is filed — creates a foundation that holds up across every forum and every repeat attack.

Build it right the first time. There may not be a second.

The post When Your Competitor Files the Same Invalidity Arguments Twice: How to Build a Prior Art Case That Holds Up Under Repeat Attack appeared first on TT CONSULTANTS.

The UPC’s First FRAND Decision: What the Dolby v. Beko Ruling Means for SEP Licensing Negotiations

Vaibhavi Kukreti — Wed, 24 Jun 2026 09:34:10 +0000

Introduction

When the Unified Patent Court launched in June 2023, SEP practitioners had one question that dominated every panel discussion and industry briefing: how will the UPC handle FRAND defences? Would it adopt the German Sisvel v. Haier framework? Develop its own standard? Take a more implementer-friendly approach influenced by other European jurisdictions?

In 2025, the Düsseldorf Local Division answered the question in Dolby International v. Beko Group. The FRAND defence was raised. The court assessed the defendant’s negotiation conduct. The FRAND defence was dismissed. The injunction issued. And the court explicitly adopted the Sisvel v. Haier framework established by the German Federal Court of Justice.

That outcome has a specific and significant consequence: the FRAND negotiation standard that has governed German SEP licensing for years now governs pan-European SEP licensing through the UPC. A FRAND defence that fails in Düsseldorf now fails at pan-European scale — with an injunction potentially covering all 17 UPC participating member states. For any company implementing standard essential patents and selling products in Europe, the engagement standard for every future FRAND negotiation has been set. This article breaks down what the court found, what the standard now requires, and what it means for your licensing strategy.

What Happened in Dolby v. Beko

The parties and the patents: Dolby International holds a portfolio of standard essential patents covering audio processing standards — specifically patents declared essential to standards used in consumer electronics including televisions, soundbars, and streaming devices. Beko Group, one of Europe’s largest consumer electronics and home appliance manufacturers, implements those audio standards in its products sold across European markets. Beko’s products are sold under the Beko brand and, through its parent company Arcelik, under the Grundig brand across significant European market footprint.

The FRAND defence and why it failed: Dolby sought an injunction through the UPC Düsseldorf Local Division. Beko raised a FRAND defence — arguing that Dolby was not offering a FRAND licence and that the injunction should therefore be refused. The court rejected the FRAND defence. Its finding: Beko had not engaged in good-faith negotiations as required by the Sisvel v. Haier framework. Beko failed to respond promptly to Dolby’s licensing offers, failed to make a substantive counter-offer within a reasonable timeframe, and failed to engage with the substance of the licensing conversation in a way that demonstrated genuine intent to obtain a FRAND licence.

The injunction and its scope: The injunction issued against Beko’s infringing products. Given the UPC’s pan-European jurisdiction, the injunction’s reach across UPC participating states is materially broader than a German national injunction would have been under the pre-UPC enforcement framework. The Dolby v. Beko outcome is the first demonstration that a failed FRAND defence at the UPC doesn’t just mean a German market injunction — it can mean a pan-European enforcement event for the same negotiation failure.

The Good Faith Negotiation Standard: What the UPC Now Requires

The Dolby v. Beko ruling — applying the Sisvel v. Haier framework — establishes five specific requirements that an implementer must meet to successfully raise a FRAND defence at the UPC. These aren’t aspirational guidelines. They’re the documented conduct the court will assess when deciding whether the FRAND licensing negotiation was conducted in good faith.

1. Respond to FRAND offers promptly — A delayed or non-response to a FRAND licensing offer is treated as evidence of unwillingness to licence. The court assesses not just what was communicated but when. A response that arrives months after a formal offer — or never arrives at all — fails this requirement regardless of what it says.

2. Make a counter-offer if the initial offer is considered non-FRAND — Silence or rejection without a substantive counter-offer does not meet the good faith standard. If you consider the SEP holder’s offer too high, your obligation is to respond with your own FRAND rate position — supported by comparable licence data and a reasoned explanation of your methodology. Simply saying the offer is not FRAND is not enough.

3. Disclose financial information relevant to FRAND rate calculation — FRAND royalty calculations require a royalty base. Refusing to disclose sales volumes, revenue figures, or market data relevant to the calculation is treated as failure to cooperate. This was a specific finding in Pantech v. Google in Japan as well — the pattern of refusing financial disclosure is now recognised as bad faith conduct across multiple major SEP jurisdictions.

4. Provide security for ongoing royalties during negotiations — If the product is in market while negotiations are ongoing, providing security — an escrow or equivalent arrangement for the royalties that would be owed if the negotiation ultimately settles at the SEP holder’s rate — demonstrates genuine intent to settle rather than strategic delay.

5. Document the negotiation record — The court reviews the documented record of negotiation conduct: emails, formal offers, counter-offers, meeting minutes, response timelines. The assessment isn’t just based on the parties’ characterisation of what happened — it’s based on the documentary evidence. Every communication in a European FRAND negotiation is potentially a document that a UPC judge will review.

“The Dolby v. Beko ruling makes clear that the FRAND defence is not a procedural shield that implementers can deploy at any point in litigation to block an injunction. It’s a defence that requires proof of genuine engagement — documented, timely, and substantive. Beko had the defence available to it. It didn’t meet the standard to use it.”

How the UPC’s FRAND Standard Aligns With — and Extends — German Case Law

The Dolby v. Beko ruling’s adoption of the Sisvel v. Haier framework is significant beyond the specific case outcome. It answers the jurisdictional question that practitioners had been asking since 2023.

The Sisvel v. Haier framework was established by the German Federal Court of Justice and has governed FRAND negotiations in German patent proceedings for several years. Under that framework, SEP holders must make a FRAND offer; implementers must respond seriously and promptly; the court will assess the quality of the parties’ negotiation conduct when evaluating injunction eligibility. The UPC Düsseldorf Local Division didn’t invent a new standard for Dolby v. Beko. It applied the existing German standard and explicitly confirmed its adoption.

This has two specific consequences for SEP licensing strategy:

Companies already familiar with German FRAND requirements know the UPC standard. The practices that have been required for German SEP negotiations — prompt responses, counter-offers with comparable data, financial disclosure, security provision — are the same practices required at the UPC. If your legal team and licensing team have been conducting German FRAND negotiations properly, they are already operating to the UPC standard.
A FRAND defence that fails in Germany will likely fail at the UPC — with pan-European consequences. This is the key escalation. Pre-UPC, a failed FRAND defence in the Düsseldorf Regional Court meant a German market injunction. Post-UPC, the same failed FRAND defence in the Düsseldorf Local Division means a potential pan-European injunction. The legal standard hasn’t changed. The geographic scope of the consequence has.

Prior to Dolby v. Beko, the Mannheim and Munich UPC Local Divisions had issued FRAND-related decisions in Panasonic v. Oppo and Huawei v. NetGear that established the doctrinal groundwork for the Düsseldorf ruling. The Dolby v. Beko decision is the first complete application of the Sisvel framework at the UPC level — the first ruling where the FRAND defence was comprehensively assessed and rejected on good faith grounds. The principles have now been applied. The standard is set.

The Pan-European Enforcement Dimension

Let’s be precise about what the geographic scope of a failed UPC FRAND defence actually means.

Before the UPC, Dolby would have needed to file separately in Germany, France, the Netherlands, Italy, and each other target jurisdiction to build a pan-European enforcement campaign. Each national proceeding would have required its own FRAND assessment under that jurisdiction’s law. The outcomes could differ across courts. The injunctions would be separate. The licensing leverage was bounded by jurisdiction.

Through the UPC, a single proceeding at the Düsseldorf Local Division can result in an injunction covering all 17 UPC participating member states. One FRAND assessment. One injunction. Pan-European commercial consequence. For Beko — a company selling products across the full European market — the practical impact of a pan-European injunction is materially greater than a German-only injunction. The commercial disruption, the supply chain implications, and the urgency of resolution are all amplified at pan-European scale.

For implementers: this means every European FRAND negotiation now needs to be treated as a pan-European risk event from the first demand. A SEP holder with UPC enforcement capability doesn’t need to file in Germany, France, and the Netherlands separately. They file once. The leverage behind their licensing demand has increased materially. And the consequences of failing to meet the good faith engagement standard have increased proportionally.

What the Dolby v. Beko Ruling Means for SEP Licensing Strategy

Here are the practical implications — for implementers first, then for SEP holders.

For Implementers: Five Things You Must Do Now

Treat every FRAND demand as a pan-European event from day one. A demand from a SEP holder with UPC enforcement capability is not a Germany-specific or Netherlands-specific issue. It is a potential pan-European injunction risk. Structure your response accordingly from the first communication.
Respond promptly — in writing, with substance. The court’s timeline assessment starts from the date of the SEP holder’s formal FRAND offer. A delayed response — even one that ultimately engages substantively — becomes evidence of bad faith if it arrives significantly after the offer date. Your first response to a formal FRAND offer should be substantive and timely.
Counter-offer with data, not just a number. A counter-offer that presents a lower rate without supporting comparable licence data is unlikely to satisfy the Sisvel framework’s counter-offer requirement. The comparable licence data and FRAND rate methodology that supports your counter-offer needs to be prepared before negotiations begin, not assembled under pressure after an offer is received.
Disclose the financial information the calculation requires. Refusing to disclose sales volumes, revenue, or market data relevant to royalty base calculation is now documented bad faith conduct — confirmed in both Dolby v. Beko (UPC) and Pantech v. Google (Japan) in 2025. Prepare your financial disclosure strategy before receiving a formal offer.
Commission an essentiality check before entering detailed negotiations. The Dolby v. Beko ruling assessed the quality of negotiation conduct — not the essentiality of the specific patents. But knowing what proportion of the asserted portfolio is genuinely technically essential gives you a factual basis for your counter-offer and negotiation position. An essentiality check is the analytical foundation of a credible counter-offer.

For SEP Holders: How the UPC Changes Your Enforcement Leverage

The Dolby v. Beko ruling is equally significant from the SEP holder’s perspective. The UPC’s pan-European enforcement capability, combined with the Sisvel framework’s clear requirements for implementer conduct, means that:

The licensing demand is now backed by credible pan-European injunction threat. A SEP holder filing at the UPC Düsseldorf Local Division isn’t threatening a German market injunction — they’re threatening a pan-European injunction. That changes the commercial urgency of the implementer’s response.

Implementer bad faith is now clearly defined and assessable. The Sisvel framework gives SEP holders a documented checklist of implementer conduct they can track and present to the court. Non-response, lack of counter-offer, refusal of financial disclosure — each is documented bad faith under the standard the Dolby v. Beko ruling confirmed.

The European licensing campaign is now a single-forum strategy. Pre-UPC, a pan-European SEP licensing campaign required coordinated multi-jurisdiction litigation. The UPC provides a single forum for pan-European enforcement. The strategic and cost efficiency of European SEP assertion has materially improved for rights holders.

How Our SEP Analysis Service Supports UPC FRAND Negotiations

Our SEP analysis service covers exactly what the Dolby v. Beko ruling requires from both sides of a UPC FRAND negotiation.

For implementers facing FRAND demands from UPC-active SEP holders: we provide essentiality analysis for declared SEP portfolios to establish the actual proportion of technically essential patents in the asserted pool, landscape mapping for standards enforced across UPC participating states, FRAND rate benchmarking using comparable European licence data that meets the evidential standards the UPC applies, and claim chart review to verify whether asserted patents read on the standard as your specific product implements it. The output gives you the analytical foundation for a documented, good-faith counter-offer — the standard Dolby v. Beko requires.

For SEP holders planning European licensing campaigns through the UPC: we provide landscape analysis identifying which implementers are most likely practicing your declared portfolio, essentiality analysis confirming the strongest patents in your assertion set, and claim chart preparation to support a formal FRAND offer with technical specificity. The UPC’s first FRAND ruling demonstrates that the quality of both the offer and the response matters. We build the analytical infrastructure on both sides.

Received a FRAND demand from a SEP holder with UPC enforcement capability? The Dolby v. Beko ruling sets the engagement standard. Our SEP analysis service provides the essentiality analysis, comparable licence data, and claim chart review that a documented, good-faith counter-offer requires. → Contact Us

Conclusion: The Takeaway

The UPC’s first FRAND decision has answered the question that practitioners had since 2023. The court applies the Sisvel v. Haier framework. Good faith is defined by documented, timely, substantive conduct — not by the absence of a refusal to licence. Beko had the FRAND defence available to it. It didn’t meet the standard to use it.

For any company implementing standards and selling products across Europe, Dolby v. Beko sets the engagement standard for every FRAND negotiation from here. The geographic stakes are pan-European. The conduct requirements are defined. The consequences of failing to meet them — a potential injunction covering 17 EU member states from a single UPC proceeding — are the highest they have ever been in European SEP litigation history.

The FRAND defence exists. But it requires the preparation to use it properly — before the demand arrives, not in response to it.

The post The UPC’s First FRAND Decision: What the Dolby v. Beko Ruling Means for SEP Licensing Negotiations appeared first on TT CONSULTANTS.

The Swiss Federal Patent Court’s Expedited Nullity Proceedings: What It Means for Pharma and MedTech IP Portfolios

Vaibhavi Kukreti — Tue, 23 Jun 2026 13:00:41 +0000

Introduction

Patent litigation in Switzerland has always operated at its own pace. The Swiss Federal Patent Court — a specialised court established in 2012, based in St. Gallen — handles both infringement and validity in a single, integrated forum. That’s an advantage over the German bifurcation model. But the timeline for nullity proceedings — the validity challenges that run alongside or in response to infringement actions — has historically been open-ended, creating extended periods of commercial uncertainty for both sides.

On December 9, 2025, the Swiss Federal Patent Court published a significant procedural update on its website: nullity actions will now be expedited whenever the challenged patent forms the basis of an ongoing infringement action, with the court targeting completion of such proceedings within a maximum of 12 months. For a jurisdiction that is home to Novartis, Roche, Lonza, Straumann, and dozens of other pharmaceutical and medical technology companies with active Swiss patent portfolios, this is a material change in the litigation landscape.

This article covers what the change means, why it matters specifically for pharma and medtech IP portfolios, and what it requires from both patent holders and market entrants before proceedings begin.

How Swiss Patent Litigation Works — and Why It Differs from Germany and the US

To understand why the December 2025 announcement matters, it helps to understand what makes Swiss patent litigation distinctive.

Switzerland is not a UPC participating state. Swiss patents are governed entirely by Swiss law and litigated before the Swiss Federal Patent Court. The UPC’s pan-European enforcement reach, the EPO’s post-grant opposition procedure, and the German bifurcated model all operate separately from the Swiss system. A European patent validated in Switzerland proceeds through the Swiss FPC for both infringement and validity challenges — not through the UPC.

The FPC hears both infringement and validity in a single court. This is one of Switzerland’s key structural advantages over the German system. In Germany, infringement is heard in the regional civil courts (Landgericht) while validity is challenged at the Federal Patent Court (Bundespatentgericht) — the infamous bifurcation model that allows an injunction to issue before validity is determined. In Switzerland, the same court determines both. The practical effect: the risk of a patent holder obtaining an injunction based on a patent that is subsequently invalidated is lower in Switzerland than in Germany.

Pre-December 2025: Nullity actions ran on their own timeline. Extended proceedings — sometimes running significantly longer than 12 months — created commercial uncertainty for both patent holders and challengers. Both sides could use the timeline strategically: patent holders to delay validity determination and maintain injunction pressure; challengers to prolong market uncertainty.

Post-December 2025: When the challenged patent is the basis of an active infringement action, nullity proceedings will now be completed within a maximum of 12 months. The extended timeline as a strategic tool is removed. Both sides need to be ready to resolve validity quickly.

The 12-month target applies specifically where the challenged patent is the basis of an ongoing infringement action — not for standalone nullity actions brought independently. But in pharma and medtech disputes, the combination of infringement claim and nullity challenge is the standard pattern. The announcement directly addresses the proceedings that matter most in these sectors.

Why Switzerland Matters for Pharma and MedTech IP

Switzerland is consistently ranked as the world’s most innovative country — WIPO’s Global Innovation Index has placed it first for 14 consecutive years. It is home to 20 of the world’s largest pharmaceutical companies by revenue, and its medical technology sector — Straumann, Sonova, Ypsomed, Medartis, and dozens of others — operates at the premium end of global device markets. For pharma innovators and IP strategists in Europe, Switzerland’s patent system isn’t a secondary jurisdiction. It is the home court for some of the world’s most commercially significant patent portfolios.

The Swiss patent landscape has two distinct layers that together define the IP environment: EPO-granted European patents validated in Switzerland (which are subject to the Swiss FPC for both infringement and validity), and domestic Swiss patents granted by the Swiss Federal Institute of Intellectual Property (IPI). Companies with Swiss commercial operations need to understand both layers — and both are affected by the expedited nullity announcement.

Supplementary Protection Certificates (SPCs) are particularly relevant in this context. SPCs extend the protection of pharmaceutical and medtech patents beyond their normal 20-year term to compensate for the time lost during regulatory approval. In Switzerland, SPCs are governed by the Swiss Patent Act and can extend protection by up to 5 years. A patent forming the basis of an infringement action in Switzerland is often an SPC-extended patent approaching the end of its term — exactly the context where the 12-month nullity timeline creates the most strategic pressure.

What the Expedited Timeline Changes for Patent Holders

The December 2025 announcement is a double-edged development for patent holders — and understanding both edges is essential before commencing Swiss infringement proceedings.

The positive edge: faster validity determination removes the uncertainty window that challengers have historically used as a negotiating tool. A patent holder with a genuinely strong patent — good prosecution history, clean prior art record, well-drafted claims — now gets faster confirmation of that strength. The extended nullity timeline that previously allowed challengers to delay settlement by keeping validity proceedings open is gone. For strong patents, the expedited timeline is an enforcement advantage.

The difficult edge: a patent holder asserting a patent with validity vulnerabilities will now face those vulnerabilities being exposed within 12 months of a nullity filing. A patent that is asserted in infringement proceedings and subsequently invalidated in expedited nullity proceedings is a materially worse outcome than not asserting at all — the cost of litigation, the reputational impact, and the loss of the licensing leverage the patent previously provided all materialise simultaneously.

The practical consequence: pre-assertion validity screening is no longer optional for Swiss patent holders. Before commencing infringement proceedings in Switzerland, every patent that will form the basis of the action should be assessed for the prior art that a challenger is most likely to deploy in expedited nullity proceedings. The question isn’t whether the patent is valid in the abstract — it’s whether it will survive a 12-month challenge from a well-prepared opponent.

Screen for non-patent literature (NPL). In pharma and medtech, the most potent invalidity arguments often come from academic papers, clinical trial publications, conference proceedings, and technical standards documents — not from prior patent filings. A validity pre-screen that covers only the patent database is structurally incomplete for Swiss pharmaceutical patent assessment.

Review prosecution history for claim scope vulnerabilities. Arguments made to the Swiss IPI or EPO examiner during prosecution define the effective scope of the claims and reveal the distinctions over prior art that were made during examination. A challenger’s first task in a nullity action is to review the prosecution history — the patent holder should do this first.

Assess SPC extension validity separately. Where the patent is SPC-extended, the SPC’s validity is a separate question from the underlying patent’s validity. Both need to be assessed before proceedings commence.

What the Expedited Timeline Changes for Market Entrants and Challengers

For generic manufacturers, biosimilar developers, and medical device companies planning Swiss market entry that requires navigating a competitor’s patent, the expedited timeline is a significant development. Our guide on opposition and nullity actions as tools for protecting your business covers the broader strategic context — for the Swiss FPC specifically, three things change under the expedited proceedings.

Faster path to market entry certainty. A nullity action filed in response to an infringement claim will now resolve within 12 months. For generic manufacturers whose market entry is being blocked by an originator infringement claim, the uncertainty window is compressed from what could previously stretch to two or more years into a defined 12-month period. This changes the commercialisation timeline calculation: the period of market exclusion while proceedings are pending is now bounded and plannable.
The front-loaded first submission requirement. The corollary of faster proceedings is that there is less time to develop and refine the prior art case during the proceedings themselves. Under expedited proceedings, the quality of the prior art submitted at the outset of the nullity action is decisive. There is no extended timeline to develop a second wave of arguments. Everything needs to be in the first submission — comprehensive claim construction, all relevant prior art references, element-by-element claim charts, prosecution history analysis.
SPC expiry timing and strategic filing. For patents approaching the end of their SPC extension in the Swiss market, the expedited timeline means nullity proceedings can be initiated and resolved within the remaining SPC term. This changes the strategic calculus for generic manufacturers planning entry around SPC expiry: a nullity action filed 12 months before SPC expiry can now potentially complete before that expiry date, rather than dragging past it into the period of generic freedom.

“The expedited timeline removes the most significant strategic uncertainty tool in Swiss patent litigation — the open-ended proceedings that neither side could predict. In its place is a defined 12-month window. For both patent holders and challengers, the quality of the prior art case prepared before proceedings begin is now the decisive factor.”

The Pre-Litigation Assessment Imperative

The December 2025 announcement creates one clear imperative for both sides of Swiss patent disputes: the analytical work needs to be done before proceedings begin, not during them.

For patent holders before asserting: Conduct a comprehensive validity pre-screen on the patent before commencing infringement proceedings. Identify the most likely prior art a challenger would deploy in a 12-month nullity action. Assess the prosecution history for claim scope vulnerabilities. If the pre-screen reveals material validity risks, resolve them through continuation strategy, claim amendment, or commercial resolution before the infringement action begins — not after a nullity action is filed under expedited proceedings.

For market entrants before launching: Commission a Switzerland-specific FTO analysis covering both the Swiss patent register and EPO-granted patents validated in Switzerland. For patents that represent genuine blocking risks, conduct a prior art pre-screen to assess whether a nullity action would succeed in expedited proceedings. The 12-month resolution target means a well-prepared nullity action can now provide market entry certainty within a defined timeframe — but only if the prior art case is ready to deploy at filing.

The prior art search is the clock-setter in both directions. For patent holders, it determines whether the patent can withstand a 12-month challenge. For challengers, it determines whether the nullity action can succeed within that window. In both cases, a prior art search that is run under litigation deadline pressure — after proceedings have begun — is a prior art search that is too late.

How Our Portfolio Analysis Service Covers Swiss Patent Exposure

Our patent portfolio analysis service covers Swiss Federal Patent Court-relevant validity assessment — including prior art search against Swiss and EPO patent claims, prosecution history review, claim scope comparison against competitor products, and SPC validity assessment where relevant.

For pharma and medtech companies with active Swiss patent portfolios, we structure assessments around the specific FPC expedited nullity timeline — identifying the prior art most likely to be deployed in a 12-month nullity proceeding and giving patent holders time to address it before infringement actions are commenced. The output isn’t just a validity assessment — it’s a pre-litigation decision brief that tells you whether the patent can withstand the expedited proceedings environment before you start them.

For market entrants planning Swiss launches, we provide FTO analysis covering the Swiss patent register, EPO-granted patents validated in Switzerland, and SPC extensions — with prior art pre-screening for blocking patents that identifies whether a nullity strategy is viable under the new 12-month proceedings framework. The goal is to give you the prior art case before you need it, not while the clock is already running.

The Swiss Federal Patent Court’s expedited nullity timeline changes the pre-litigation calculus for pharma and medtech portfolios. Our portfolio analysis service covers Swiss patent validity before the clock starts running — so you know what you’re asserting before you assert it. → Contact Us

Conclusion: The Takeaway

The Swiss Federal Patent Court’s December 2025 announcement is a procedural change with real strategic consequences. A 12-month nullity target tied to active infringement proceedings removes the extended uncertainty window that both sides previously relied on. In its place is a defined, compressed timeline where the quality of the prior art case prepared before proceedings begin is the decisive factor.

For patent holders: assert only what can withstand a 12-month validity challenge. Pre-emptive validity screening before Swiss infringement proceedings is no longer optional. For market entrants: the expedited timeline creates a defined path to validity certainty — but only for challengers who arrive at filing with a comprehensive, front-loaded prior art case ready to deploy.

In Switzerland, the clock on validity is now set at 12 months. The analytical work needs to be done before it starts.

The post The Swiss Federal Patent Court’s Expedited Nullity Proceedings: What It Means for Pharma and MedTech IP Portfolios appeared first on TT CONSULTANTS.

The Rise of NPE Litigation: Why Non-Practicing Entities Are Targeting Mid-Market Companies — and How Proactive Infringement Monitoring Changes Your Defence

Vaibhavi Kukreti — Tue, 23 Jun 2026 10:48:20 +0000

Introduction

Here’s the situation many mid-market technology companies find themselves in right now: a demand letter arrives from a company they’ve never heard of, asserting patents on technology that’s central to their product. The patents look broad. The demanded royalty rate is significant. And the two options on the table — pay up or litigate — both look expensive.

This is the NPE playbook. And it’s working more effectively than at any point in the past five years. Patent assertion entity filings increased by 14% in the first half of 2024 compared to the same period in 2023. EDTX and WDTX accounted for 63.7% of all NPE patent cases in 2025. And the most cost-effective defensive tool that companies previously had — filing an IPR petition at PTAB to challenge the patent’s validity at a fraction of district court litigation cost — is now being denied at rates exceeding 63% under Director Squires’ centralised institution process.

The combination is creating a specific, serious problem for mid-market companies. Large enough to be worth targeting. Not large enough to have the litigation infrastructure to fight back easily. And now without reliable access to the defensive path that previously made NPE campaigns less economically attractive. This article covers why that combination has made mid-market companies the preferred NPE target in 2025 — and why proactive infringement monitoring is now the most valuable investment a mid-market IP team can make.

The NPE Landscape in 2025: What the Data Shows

+14% NPE filing increase first half of 2024 vs. same period 2023 | 63.7% of NPE cases in EDTX+WDTX plaintiff-favorable venues dominating | 63%+ PTAB IPR denial rate under Director Squires’ centralised process

NPE activity isn’t new. But the 2025 environment has specific characteristics that distinguish it from the patterns of five years ago.

The most significant structural change is the multi-defendant campaign model. Rather than filing sequentially against individual targets, NPEs increasingly file against entire product categories simultaneously — naming 8, 10, or 12 defendants in a single complaint or coordinated series of complaints filed the same day. A single legal infrastructure, multiple licensing outcomes. The economics are compelling: the cost of running one well-prepared assertion campaign against 10 defendants is far lower than running 10 separate campaigns, and the settlement pressure on each defendant is amplified by seeing that others in their market have also been targeted.

The venue picture reinforces this. EDTX under Judge Gilstrap remains the dominant NPE venue for technology patents — fast dockets, plaintiff-friendly jury pools, and damages calculation norms that historically favour patent holders. WDTX under Judge Albright has become the second venue of choice for specific technology categories. Together they handle nearly two-thirds of all NPE patent litigation in the US. If you’re in software, AI, connected hardware, semiconductors, or medical devices, the chances that a demand letter you receive is backed by a filing in one of these two courts is extremely high.

Why Mid-Market Companies Are the Preferred NPE Target

NPE targeting isn’t random. There’s a clear economic logic behind which companies get hit — and it explains precisely why mid-market companies are now squarely in the crosshairs.

The NPE business model requires identifying companies that (1) generate meaningful revenue from technology that infringes the asserted patent, (2) face sufficient financial exposure from litigation to make settlement economically rational, and (3) lack the litigation infrastructure to fight back effectively over multiple years. That combination points overwhelmingly at companies in the $50M–$500M revenue range.

Large corporations ($500M+ revenue) have in-house patent litigation teams, established outside counsel relationships, standardised insurance coverage, and the balance sheet to litigate for 3–4 years if needed. They’re expensive to fight and increasingly likely to counter-assert. NPEs still target them — but the expected settlement is harder to extract.

Small companies (under $50M revenue) don’t have enough revenue to make a licensing demand economically significant. The settlement that would make the campaign worthwhile is larger than what the company can realistically pay. They’re not worth the overhead of a full campaign.

Mid-market companies ($50M–$500M revenue) hit the sweet spot on all three dimensions. Revenue is significant enough to support a meaningful licensing demand. The company is unlikely to have a dedicated patent litigation team. And the prospect of a 3-year district court litigation is genuinely disruptive in a way that makes settlement look rational even when the patents are weak.

The PTAB accessibility problem amplifies this. When IPR was reliably available, a mid-market company receiving a demand letter had a credible, low-cost path to challenging the patent’s validity. The settlement dynamic was different when the NPE knew the target could file a strong IPR petition. Under current PTAB conditions, that lever is significantly weakened. The expected litigation cost for a mid-market company that decides to fight has increased materially — which pushes more companies toward settlement even when the underlying patent is weak.

“The NPE targeting model is simple: find companies large enough to pay, small enough not to fight, and in a jurisdiction that moves fast. The PTAB shift has removed the most cost-effective defensive tool from the mid-market company’s arsenal at exactly the moment when NPE filing volumes are increasing.”

The PTAB Problem: Why Your Primary Defence Just Got Harder

Let’s be specific about what’s happening at the Patent Trial and Appeal Board.

Under Director Squires’ centralised institution process, IPR petitions are now reviewed by the Director’s office before the Board sees them. The result: institution rates have dropped from a historical average of around 62% to approximately 37% in 2025. Over 63% of IPR petitions are being denied — and the denials are disproportionately affecting defendants in parallel district court litigation, defendants asserting older patents, and defendants whose petitions don’t clear the elevated practical bar the Director’s review has imposed.

Three specific doctrines are driving the denials that matter most for NPE defence:

The Fintiv framework. If parallel district court litigation is active and moving quickly, PTAB can — and increasingly does — deny IPR institution on efficiency grounds. A fast-moving EDTX docket combined with an NPE’s refusal to agree to a stay creates exactly the Fintiv conditions that lead to denial. The NPE files in EDTX specifically because the fast docket triggers Fintiv. It’s a deliberate strategy.
The settled expectations doctrine. Patents in force for six or more years are increasingly receiving discretionary denials on the grounds that patent holders and licensees have built businesses around those patents and the PTAB should give weight to that reliance. Many NPE assertion campaigns use patents that have been held for years before assertion. The settled expectations doctrine specifically protects those patents from IPR.
Elevated practical institution bar. The theoretical standard for IPR institution — showing a reasonable likelihood that at least one claim is unpatentable — hasn’t changed. The practical bar the Director’s review applies has risen significantly. Petitions that would have been instituted in 2022 are being denied in 2025.

The consequence: ex parte reexamination — filed anonymously, carrying no IPR-style estoppel, and available regardless of parallel litigation — is now the primary PTAB-adjacent tool for mid-market NPE defence. But ex parte reexam is slower, less targeted, and less reliable than IPR. It’s a fallback, not a solution.

What the NPE Playbook Looks Like — From Demand Letter to Trial

Understanding the NPE sequence helps you identify exactly where proactive preparation changes the outcome.

Stage 1 — Demand Letter: Asserts infringement of one or more patents, proposes a licensing rate, sets a response deadline (typically 30–60 days). Often sent to multiple companies simultaneously. The rate is set high enough to create settlement pressure but low enough to seem cheaper than litigation.

Stage 2 — Complaint Filing: Filed in EDTX or WDTX if the demand is ignored or rejected. The speed of case management in these venues is itself a pressure tool — early scheduling orders, tight discovery deadlines, and accelerated trial dates create cost and disruption.

Stage 3 — Discovery: Broad discovery requests designed to increase cost and disruption. For mid-market companies without dedicated litigation infrastructure, discovery burden is disproportionately painful relative to larger corporations with in-house litigation teams.

Stage 4 — IPR Petition: Filed within one year of complaint service. Under current PTAB conditions, institution is uncertain. If denied under Fintiv or settled expectations, the invalidity case has to work in district court instead.

Stage 5 — Settlement or Trial: The overwhelming majority of NPE cases settle before trial. The settlement amount is heavily determined by the defendant’s perceived invalidity position. A defendant with a credible, documented invalidity analysis negotiates from a materially different position than one that received the demand cold.

The critical insight from this sequence: the invalidity position you have on the day you receive the demand letter is the most important determinant of your settlement leverage. If you have a documented prior art analysis that credibly threatens the asserted patent, the NPE’s expected settlement revenue decreases. If you don’t, you’re negotiating from the NPE’s opening position.

How Proactive Infringement Monitoring Changes Your Defence Position

This is where proactive patent monitoring becomes one of the highest-return investments a mid-market IP team can make. The companies that respond most effectively to NPE demands are the ones that already know their invalidity position before the demand letter arrives. Monitoring does two specific things that transform the NPE defence calculus:

It identifies assertable patents before the NPE does. Classification-based patent monitoring — tracking new grants in the technology sub-domains most relevant to your product — surfaces potentially assertable patents at the time of grant, not at the time of a demand letter. When a new patent issues in a classification that covers your product’s core functionality, monitoring catches it immediately. That gives you the window to run a validity pre-screen, build a prior art case, assess design-around options, or — in some cases — take a proactive licence on your terms rather than the NPE’s.

It creates a documented prior art analysis history. An ongoing monitoring programme that has tracked a patent from its grant date creates a documented record of when potentially relevant prior art was identified and assessed. When the demand letter arrives 18 months after grant, that record is already built. The prior art analysis doesn’t need to be commissioned from scratch under a litigation calendar. It exists. And it can be deployed rapidly — within days, not weeks — as the foundation of the response.

The difference this makes in practice is significant. A mid-market company that responds to a demand letter within 30 days with a well-documented, credible invalidity analysis is sending a specific signal to the NPE: this target has prepared, this case will be contested, and the expected litigation cost on the NPE’s side is higher than it looked from the outside. For NPEs running volume campaigns with limited per-case economics, that signal changes the settlement calculus.

A company that receives the demand cold — no monitoring, no prior art on hand, no invalidity position — sends the opposite signal: easy target, fast settlement, move on.

How Our Patent Infringement Search Service Supports NPE Defence

Our patent infringement search service is structured around the pre-demand posture that changes the NPE defence calculus. For mid-market companies in technology sectors with high NPE assertion activity — software, AI, connected hardware, medical devices, wireless communications — we provide two engagement structures:

Ongoing classification-based monitoring. We track new patent grants in the CPC and IPC classification codes most relevant to your product’s technology space, running rapid validity pre-screening on grants that represent credible assertion risk. When a patent that could plausibly be asserted against your product issues, you know about it at grant — not in a demand letter 18 months later. The prior art analysis is built proactively, documented, and ready to deploy.

Rapid-response invalidity search for active demands. For companies that have already received a demand letter, we provide rapid-response prior art searches structured to support IPR petitions, ex parte reexamination filings, and district court invalidity contentions. Every search starts with claim construction under the relevant interpretive standard, covers 15+ databases including USPTO, Espacenet, JPO, KIPO, and NPL sources, and delivers element-by-element claim charts — the format that counsel can work with directly under litigation deadlines.

NPE filings are rising and PTAB is harder to access than ever. Our infringement monitoring and invalidity search service gives mid-market companies the pre-demand posture that changes the NPE defence calculus — before the demand letter picks your timing for you. → Contact Us

Conclusion: The Takeaway

Three rulings in one year have changed Japan’s patent landscape more than anything that happened in the previous decade. Record damages. The first SEP injunction in history. Cross-border digital enforcement. These are not incremental developments — they are structural shifts in what Japanese patent enforcement can achieve.

For patent holders, the consequence is a licensing market that is now worth engaging seriously — with enforcement tools that support the licensing conversation and a cultural framework that rewards the patience to build the relationship before presenting the commercial terms. The companies that act on this quickly have a genuine first-mover advantage in a market that most competitors haven’t yet mapped.

Japan has signalled, through its courts and through its JPO guidelines, that it wants to be taken seriously as a global patent jurisdiction. The patent holders that take it seriously first are the ones that will build durable licensing programmes in one of the world’s most commercially significant patent markets.

The post The Rise of NPE Litigation: Why Non-Practicing Entities Are Targeting Mid-Market Companies — and How Proactive Infringement Monitoring Changes Your Defence appeared first on TT CONSULTANTS.

Why This Is Now One of the Most Valuable Patent Licensing Markets in the World — and How to Build a Strategy for It

Vaibhavi Kukreti — Tue, 23 Jun 2026 07:19:14 +0000

Introduction

We’re going to start with the data. Then the jurisdiction.

In May 2025, a country’s intellectual property high court awarded the equivalent of approximately $140 million in patent damages in a single case — the highest in that court’s history. In June 2025, the same country’s district court issued the first SEP injunction in its legal history, ordering the suspension of product sales. In March 2025, its supreme court extended patent rights to overseas digital services serving its users — bringing millions of SaaS and software users within the scope of its patent enforcement for the first time.

Three rulings. One year. The jurisdiction is Japan. And together, these decisions represent a transformation in Japan’s patent landscape that creates a licensing market opportunity that most Western patent holders haven’t yet positioned themselves to capture. This article covers what changed, who should be building a Japan licensing strategy now, and how to approach it — because the cultural dynamics that have always defined Japanese licensing negotiations haven’t disappeared. They’ve just been joined by enforcement tools that didn’t exist before 2025.

The Three 2025 Rulings That Transformed Japan’s Patent Landscape

Let’s look at each ruling and what it specifically changes about Japan’s patent licensing environment.

¥21.7B Damages awarded by Japan’s IP High Court (May 2025) Highest patent damages award in Japanese legal history — approximately $140M USD

First SEP injunction in Japanese history (June 2025) Tokyo District Court ordered suspension of Google Pixel 7 sales in Japan — Pantech v. Google

March 2025 Supreme Court cross-border ruling Dwango v. FC2 — overseas digital services serving Japanese users now subject to Japanese patent rights

Ruling 1: The ¥21.7 Billion Damages Award. Japan’s IP High Court awarded ¥21.7 billion in damages in a pharmaceutical patent case involving a use invention for the anti-itch medication Remitch OD Tablets. The defendant had been infringing since 2018. The patent had a term extension. The court awarded full damages on all infringing sales — applying a damages calculation methodology comparable to what US courts have applied for years in similar long-running pharmaceutical infringement cases. The award signals that Japanese courts are now willing to grant damages at a scale that makes Japan a serious enforcement venue for patent holders with pharmaceutical and life sciences portfolios.

Ruling 2: The First SEP Injunction. The Tokyo District Court’s Pantech v. Google ruling — Japan’s first SEP injunction — changes the negotiating dynamic with Japanese implementers of wireless standards fundamentally. For over a decade, implementers operating in Japan could rely on the 2014 Apple v. Samsung Grand Panel principle as a practical shield against injunctions. That shield is now conditional on good-faith negotiation conduct. For SEP holders seeking to engage Japanese implementers, the existence of a credible injunction threat changes the opening conversation.

Ruling 3: The Dwango Cross-Border Ruling. The Supreme Court’s March 2025 ruling extended Japanese patent rights to overseas digital services serving Japanese users. This creates an entirely new category of potential licensees: foreign technology companies that were previously outside the reach of Japanese patent enforcement. Software platforms, SaaS products, streaming services, and API providers serving Japanese users from overseas infrastructure are now within scope. For patent holders with relevant software and system patents, this ruling materially expands the universe of companies that can be engaged in Japan licensing discussions.

What Makes Japan Different as a Licensing Market

Here’s the thing about Japan that Western patent holders consistently underestimate: the enforcement tools matter, but so does how you use them. Japan has always had a distinct licensing culture. The 2025 rulings haven’t changed that. They’ve changed the leverage behind it.

Japanese companies — particularly in manufacturing, automotive, consumer electronics, and precision technology — take long-term business relationships with extreme seriousness. A licensing approach that opens with aggressive assertion is culturally counterproductive. It signals that the relationship doesn’t matter, which in Japan signals that the licensor doesn’t understand the market they’re entering. The licensing conversations that succeed in Japan are the ones where the relationship was established before the commercial terms were introduced.

The JPO Patent Licensing Recommendation System provides a formal mechanism for this approach. The JPO’s mediation service — rarely used by Western companies, but respected and effective in the Japanese context — facilitates licensing negotiations between parties who have established a basis for discussion but haven’t been able to agree on commercial terms. Filing a JPO mediation request signals seriousness and good faith. It’s a culturally appropriate escalation path that sits between informal negotiation and litigation.

Japan’s industrial strengths are concentrated in technology areas where patent portfolios tend to be deep and commercially relevant: automotive and powertrain technology, precision manufacturing and robotics, semiconductor fabrication, consumer electronics, pharmaceutical chemistry, and increasingly, AI and machine learning. If your portfolio has patents that map to any of these areas and your current licensing programme doesn’t include Japan, you have an addressable gap.

“The 2025 rulings didn’t make Japan aggressive. They made Japan credible. For the first time, patent holders engaging Japanese companies have enforcement tools that match the seriousness of the conversation. But the conversation still has to be built on a relationship. That’s not a cultural nicety — it’s how licensing actually gets done in Japan.”

Who Should Be Building a Japan Licensing Strategy Now

Not every patent holder has an immediate Japan licensing opportunity. But four categories of holders now have a materially stronger basis for engaging the Japanese market than they did in 2024.

Software and digital service patent holders. The Dwango cross-border ruling brought foreign companies serving Japanese users within the scope of Japanese patent enforcement. If you hold patents covering technology that foreign companies are using in services delivered to Japanese users — comment systems, content delivery, recommendation algorithms, real-time synchronisation, video processing — those companies are now potential Japanese-market licensees in a way they weren’t before March 2025.
SEP holders with Japanese-declared patents. The Pantech v. Google ruling changed the Japanese SEP enforcement calculus. Japanese implementers of LTE, 5G, Wi-Fi 7, and Bluetooth who previously relied on the 2014 Apple v. Samsung principle as a practical shield against injunctions now face a new standard. For SEP holders, the Tokyo District Court’s January 2026 guidelines positioning the court as a global FRAND rate determination forum add an additional dimension — Japan is now a serious option for cross-border SEP licensing campaigns, not just a secondary venue.
Pharmaceutical and biotech patent holders. Japan’s ¥21.7 billion damages award came in a pharmaceutical use invention case. The IP High Court’s methodology — awarding full damages on all infringing sales across the full infringement period — applies equally to other pharmaceutical patent cases. For originator pharma and biotech companies with Japanese-market products and competitors, Japan is now a serious damages venue that changes the economics of patent enforcement and licensing negotiations.
Universities and TTOs. Japanese companies in automotive, electronics, precision manufacturing, and robotics are active licensees. University patent portfolios that map to Japan’s industrial strengths — materials science, manufacturing process innovations, sensor technology, AI in industrial applications — have licensing potential in the Japanese market that is materially underexplored by most Western TTOs. Japan’s relationship-first licensing culture actually aligns well with university technology transfer approaches that emphasise collaboration over adversarial assertion.

Building a Japan Patent Licensing Strategy: The Five Steps

Japan is not a market where aggressive cold outreach generates licensing conversations. Here’s the structured approach that works — and where to find guidance on the broader patent monetisation strategy framework that underpins Japan-specific licensing decisions.
Map your patents against Japanese commercial activity. Identify which patents in your portfolio cover technology that Japanese companies are actively using in products sold in or into Japan. For software and digital service patents, the Dwango ruling adds a new dimension — map your patents against foreign companies serving Japanese users digitally, not just domestic Japanese product companies. The mapping exercise should produce a prioritised list of target patents and potential licensees before any outreach begins.
Run an evidence of use analysis scoped to the Japanese market. An evidence of use analysis identifies specific Japanese products, services, or companies that may be practising your patent claims. It transforms the licensing conversation from ‘we think you may need a licence’ to ‘here is the specific product feature that practises claim 1 of our patent’. That specificity is essential in the Japanese context, where vague licensing demands are treated as insufficiently serious to warrant a meaningful response.
Benchmark licensing terms using Japanese comparable data. US and European comparable licence data may not be accepted as fair benchmarks in Japanese FRAND negotiations or in JPO mediation proceedings. Build a comparable licence dataset from Japanese licensing transactions specifically — the royalty rates, structures, and terms that Japanese courts and the JPO mediation service have accepted as reasonable in comparable cases.
Invest in the relationship before the licensing conversation.
Use JPO mediation as an escalation path before litigation. The JPO’s mediation service is faster, less adversarial, and more culturally aligned with Japanese business norms than patent litigation. For licensing campaigns that stall on terms — where there is genuine willingness on both sides but the parties can’t bridge the gap on rate or structure — JPO mediation is the preferred next step. Filing for mediation signals commitment to resolution rather than adversarial escalation, which matters enormously to Japanese counterparties.

The Licensing Structures That Work in Japan

Japan’s licensing culture influences not just how licensing conversations happen but what structures work when they do. For a broader framework on how to unlock patent portfolio value through different monetisation structures, the Japan-specific structures that generate the most durable licensing outcomes are:

Field-of-use licensing for platform technology. Japanese companies respond positively to licensing structures that give them meaningful exclusivity within their specific application domain. A field-of-use licence that covers automotive applications but not consumer electronics — or industrial robotics but not medical devices — aligns with the Japanese preference for clear, mutually beneficial commercial arrangements. It also maximises total licensing revenue from a single patent across multiple sectors.
Cross-licensing with Japanese industrial partners. Japanese companies hold extensive patent portfolios in their areas of industrial strength. Cross-licensing arrangements — where the licence is structured as an exchange of rights rather than a unilateral payment — align well with the Japanese cultural preference for mutually beneficial long-term relationships. For patent holders who can bring technology that Japanese companies genuinely want, cross-licensing is often a faster path to agreement than pure royalty licensing.
Licensing pilots for emerging technology. For patents covering technology that is still commercially unproven in the Japanese market, a licensing pilot — a short-term, lower-fee arrangement that lets a potential licensee evaluate the technology before committing to a full licence — reduces the friction of an early-stage licensing conversation. Japanese companies are cautious about commitments to unproven technology. A pilot gives them a structured path to evaluation that fits their decision-making culture.
Royalty structures tied to Japanese market revenue. For software and digital service patents following the Dwango ruling, licensing structures that tie royalties to Japanese-market revenue — rather than global revenue — are more likely to be accepted as commercially reasonable by Japanese licensees. The royalty base should reflect the value delivered in the Japanese market specifically.

How Our Portfolio Commercialisation Service Supports Japan Licensing

Our patent portfolio commercialisation service covers Japan-specific landscape analysis to identify active Japanese companies in your technology space, evidence of use analysis scoped to the Japanese market and — following the Dwango ruling — to foreign companies serving Japanese users, FRAND and market-rate benchmarking using Japanese comparable licence data, and licensing outreach preparation including Japan-market technology briefs in Japanese-language ready format.

For companies building a Japan licensing programme for the first time, we structure the analytical foundation that makes the licensing conversation credible before it starts: patent-to-product mapping that connects your patents to specific Japanese commercial activity, evidence of use analysis that gives your outreach a specific, credible basis, and benchmarking data that supports a Japan-appropriate rate position. The relationship and the negotiation are yours to manage. The analytical infrastructure that makes them credible is what we build.

Japan’s patent licensing market has fundamentally changed. Three 2025 rulings have created enforcement tools that didn’t exist before. Our portfolio commercialisation service provides the Japan-specific analysis that makes a licensing conversation credible before it starts. → Contact Us

Conclusion: The Takeaway

The post Why This Is Now One of the Most Valuable Patent Licensing Markets in the World — and How to Build a Strategy for It appeared first on TT CONSULTANTS.

If Your Server Is Overseas but Your Users Aren’t, You May Already Be Infringing: What the Supreme Court Ruling Means for SaaS and Software Companies

Vaibhavi Kukreti — Tue, 23 Jun 2026 06:50:09 +0000

Introduction

Here’s the assumption that most SaaS and software companies have been operating under when it comes to Japan: if your servers are outside the country, Japanese patent rights can’t reach you. The territorial principle of patent law — a patent only covers the territory of the country that granted it — seemed straightforward. No physical presence. No manufacturing. No Japanese servers. No infringement.

On March 3, 2025, the Japanese Supreme Court ended that assumption. In Dwango Co., Ltd. v. FC2, Inc., the court held that distributing a patented program or service from overseas servers to Japanese users through telecommunications lines constitutes patent infringement under Japanese law. The territorial principle wasn’t overturned — but its practical application was fundamentally extended to cover digital services delivered across borders.

The ruling has direct consequences for every SaaS company, cloud platform operator, streaming service, and software company that serves Japanese users from non-Japanese infrastructure. If you haven’t reassessed your FTO position for the Japanese market since March 2025, this article covers what you need to know.

The Old Assumption: Servers Outside Japan Meant No Japanese Patent Risk

Japan’s Patent Act is built on the territorial principle: a Japanese patent confers exclusive rights within Japan. Infringement requires acts — making, using, selling, importing — that occur within Japanese territory. For physical products, this is straightforward. Manufacturing a product in Germany and selling it in Japan is a Japanese-market act. Manufacturing in Germany and selling in Germany is not.

For digital services, the territorial principle appeared to offer a clear safe harbour. If the server is outside Japan, the argument ran, the ‘making’ and ‘using’ of the patented system occurs outside Japan. Japanese patent rights don’t apply. This was the position that FC2 — a US-based digital platform operator — relied on when it provided a video comment overlay service to Japanese users from servers located in the United States.

That position was correct at the Tokyo District Court level. It was overturned at the IP High Court level. And the Supreme Court confirmed the IP High Court’s reversal. The safe harbour that SaaS and software companies had relied on for cross-border digital services no longer exists in the form it was understood.

What the Dwango v. FC2 Ruling Actually Says

Let’s look at the specifics — because the precise legal standard the Supreme Court established determines which digital services are affected and which aren’t.

The parties and the patent: Dwango Co., Ltd. operates Niconico, one of Japan’s largest video streaming platforms. Dwango holds Japanese Patent No. 5424245 — covering a system for displaying user-generated comments overlaid on streaming video in real time, synchronised to specific playback moments. FC2, a US-based operator, provided a substantially similar ‘FC2 Video’ service to Japanese users from servers located in the United States.

The chain of decisions: The Tokyo District Court dismissed Dwango’s infringement claim — servers outside Japan, territorial principle applies, no infringement. The IP High Court reversed, finding that the functions of the patented system were realised in Japan through the interaction between FC2’s overseas servers and Japanese users’ terminal devices. The Supreme Court affirmed the IP High Court and provided the legal framework that now governs cross-border digital service infringement in Japan.

The legal standard: The Supreme Court held that infringement of a system patent through cross-border digital service provision requires that both the technical effect and the economic effect of the patented invention be manifested in Japan. The technical effect — the patented system functioning as claimed — occurs in Japan when Japanese users interact with the service on their Japanese terminal devices. The economic effect — commercial benefit — occurs in Japan when Japanese users receive and pay for the service. Where both effects clearly manifest in Japan, the act of providing the service from overseas servers falls within the scope of Japanese patent rights under Article 2, Paragraph 3, Item 3 of the Patent Act — the provision of a programme through telecommunications lines.

“The Supreme Court didn’t overturn the territorial principle. It applied it to the reality of how digital services actually work. When a patented system functions in Japan and generates economic value in Japan, the act of providing it — regardless of where the servers sit — is an act that occurs within the scope of Japanese patent rights.”

Which Software and SaaS Products Are Most at Risk

The Supreme Court’s ‘both effects in Japan’ standard provides a framework for assessing which digital services are most exposed. Here’s how it maps to common product categories.

Highest risk: Cloud-delivered SaaS platforms where the core functionality — the patented system — executes through the interaction between overseas servers and Japanese user terminals. If the product delivers its primary value to Japanese users through this interaction, both the technical and economic effects manifest in Japan.

High risk: Streaming and content delivery services delivering audio, video, or interactive content to Japan — directly addressed in the Dwango ruling. Services with real-time interactivity features (comments, reactions, live elements) are the closest factual parallel to the Dwango facts.

Moderate risk: Network-based systems where some components are in Japan (user terminals, edge nodes, local processing) and the central system is overseas. The Supreme Court confirmed these ‘split’ architectures can constitute infringement where the overall system functionality manifests in Japan.

Assess case by case: API-based services to Japanese business customers running applications in Japan. Mobile applications delivered via overseas app stores where the patented functionality executes on Japanese devices. The ‘both effects’ test applies — the specific facts of each product determine the outcome.

The common thread across all of these: if Japanese users interact with your product and you generate revenue from those interactions, the technical and economic effects are likely to manifest in Japan. The server location is no longer the determinative factor.

How Your FTO Approach for Japan Needs to Change

Here is the practical update that the Dwango ruling requires. Our framework for FTO search best practices covers the general methodology — for Japan specifically, five steps now apply that didn’t before March 2025.

Re-examine prior FTO conclusions for the Japanese market. If your company previously conducted an FTO analysis for Japan and concluded that no Japanese FTO was required because your servers are located outside Japan, that conclusion needs to be re-examined under the Dwango standard. A conclusion that was correct under the old territorial interpretation may no longer reflect your actual legal position.
Commission a Japan-specific FTO analysis covering your product’s functionality as experienced by Japanese users. The standard the Supreme Court established assesses infringement based on how the patented system functions from the perspective of Japanese users interacting with it. An FTO analysis for Japan needs to be scoped to the specific technical features your product delivers to Japanese users — not just the architecture of your backend infrastructure.
Prioritise JPO patent searches alongside USPTO and EPO searches. The most relevant prior art for a Japanese FTO is in the JPO database. Japanese companies filing system and software patents domestically may hold patents that weren’t visible in a US-only FTO and that now apply to your cross-border digital service under the Dwango framework. Japan-specific FTO search requires native-language access to J-PlatPat and JPO databases — machine-translation-only search is insufficient for the most commercially significant documents.
Review prosecution history of potentially blocking Japanese patents. Japanese FTO analysis requires reviewing the prosecution history of potentially blocking patents — the arguments made to the JPO examiner during prosecution significantly influence how Japanese claims are construed. A patent that appears to cover your product on a literal reading of the claims may not cover it after prosecution history estoppel is analysed. This is a distinctive feature of Japanese claim construction that changes FTO outcomes materially.
Monitor for new patent applications targeting cross-border digital functionality. Japanese companies aware of the Dwango ruling may be filing new patent applications specifically directed at cross-border digital service functionality. A monitoring programme covering JPO applications in your product’s technology classification is the early warning mechanism that catches these applications before they grant and generate FTO risk.

What’s Coming Next: JPO Patent Act Amendment

The Dwango ruling didn’t just change the enforcement landscape — it triggered a legislative review that will likely formalise and potentially extend the standard the Supreme Court established.

The JPO launched a review of the Patent Act following the Supreme Court’s March 2025 ruling to assess whether an explicit statutory amendment is needed to codify the cross-border infringement standard. The review is examining whether Article 2, Paragraph 3 — the ‘provision through telecommunications lines’ provision that the Supreme Court relied on — needs to be amended to explicitly address cross-border digital service provision, and whether additional categories of cross-border digital acts should be brought within the scope of Japanese patent rights.

The legislative outcome is expected to reinforce, not narrow, the Supreme Court’s position. An explicit statutory provision codifying cross-border digital infringement would give future plaintiffs clearer grounds for assertion and would remove the argument that the Dwango ruling was an expansive judicial interpretation rather than the plain meaning of the Act. For FTO planning purposes, the direction of travel is clear: Japan’s patent enforcement reach over cross-border digital services is expanding, not contracting.

How Our FTO Service Covers the Post-Dwango Japanese Market

Our freedom to operate search service covers Japan-specific patent analysis using J-PlatPat and JPO native databases, with claim construction performed under Japanese interpretive standards — including prosecution history review for potentially blocking patents. Native-language analysis in Japanese is standard for high-relevance documents, not an optional add-on.

For SaaS and software companies newly exposed to Japanese patent risk under the Dwango ruling, we structure FTO engagements around the specific technical features of your product as experienced by Japanese users — the standard the Supreme Court established, not the server-location framework that preceded it. The engagement covers active JPO-granted patents and published applications in the relevant technology classifications, with prosecution history review for the highest-risk references and element-by-element claim charts that map your product’s features against potentially blocking claims.

For companies that have already received licensing demands or infringement assertions related to Japanese-market products, we provide rapid claim chart review and prosecution history analysis — the technical foundation for a substantive response under Japan’s current enforcement environment.

Serving Japanese users from overseas infrastructure? The Dwango ruling may have changed your FTO position. Our Japan-specific FTO analysis covers the post-Supreme Court enforcement environment — scoped to your product’s functionality as it reaches Japanese users. → Contact Us

Conclusion: The Takeaway

The Dwango v. FC2 ruling is one of the most practically significant patent decisions for software and SaaS companies operating internationally in the past decade. It didn’t change what Japanese patent law says. It changed how it applies to the reality of how digital services work.

If Japanese users interact with your product — if the patented system functions in Japan and you generate revenue from those interactions — you are within the scope of Japanese patent rights. Server location is no longer the determinative factor. The territorial principle survives, but the territory it covers for digital services now follows the user, not the infrastructure.

The FTO analysis that cleared your product for the Japanese market before March 3, 2025 may not reflect your current legal position. Now is the right time to find out — before a demand letter does it for you.

The post If Your Server Is Overseas but Your Users Aren’t, You May Already Be Infringing: What the Supreme Court Ruling Means for SaaS and Software Companies appeared first on TT CONSULTANTS.

How the Unified Patent Court Is Reshaping Patent Landscape Analysis for European R&D Teams

Vaibhavi Kukreti — Mon, 22 Jun 2026 13:33:07 +0000

Introduction

Before the Unified Patent Court, a patent landscape analysis for a European product followed a relatively predictable logic. Map the national patents in your key markets — Germany, France, the Netherlands. Identify the blocking patents. Assess the competitive IP picture jurisdiction by jurisdiction. Run your FTO in the markets that matter.

That logic still applies. What has changed is the risk weighting behind it.

A European patent that sat in a landscape analysis as a ‘Germany risk’ before June 2023 is now a pan-European enforcement risk — the same patent, in the same landscape, capable of generating an injunction covering 17 EU member states from a single UPC proceeding. The patent didn’t change. What changed is what it can do. A landscape analysis that doesn’t account for that shift is measuring the right patents with the wrong risk weighting. And for R&D teams making investment decisions and product launch plans based on that analysis, the difference matters.

What the UPC Changed About European Patent Enforcement

The full story of the UPC’s first three years is covered in our analysis of how the Unified Patent Court is shaping Europe’s patent landscape. For landscape analysis purposes, two structural changes matter most.

Pre-UPC: European patents were ‘bundle patents’ — a collection of national rights, each enforced in its home court. A German patent covered Germany. A French patent covered France. Enforcement in one country didn’t affect another. Pan-European enforcement meant filing separately in each national jurisdiction.

Post-UPC: European patents not opted out of the UPC system can be enforced in a single proceeding covering all 17 participating member states. One claim, one court, one potential injunction across the entire UPC territory. The risk profile of a European patent has fundamentally changed.

The practical consequence for landscape analysis: a patent previously weighted as a single-country enforcement risk now carries pan-European enforcement potential. The filing density picture — who holds how many patents, in which technology sub-domains — hasn’t changed. The strategic weight of those patents has. A competitor with 10 European patents pre-UPC could generate 10 separate national enforcement actions at significant cost. Post-UPC, those same 10 patents could support a single pan-European proceeding. That difference needs to be reflected in how landscape analysis outputs are read and acted upon.

How Landscape Analysis Needs to Change for the UPC Era

Here’s the practical update. A patent landscape analysis structured for the UPC era needs to account for four things that pre-UPC landscapes typically didn’t:

Scope to all 17 UPC participating states, not just primary sales markets. A landscape that covers Germany, France, and Benelux but not the other 14 UPC participating states is no longer comprehensive for any European product. European patents enforced through the UPC cover all participating states simultaneously. The competitor portfolio you identify in Germany is the portfolio that could be enforced against your product in Spain, Italy, Sweden, Denmark, and the other participating states from the same Munich or Düsseldorf proceeding.
Flag patents whose holders are active UPC filers. Not every patent holder in your landscape is a UPC enforcement threat. The 946 cases filed in the UPC’s first three years are concentrated among a relatively small set of assertive patent holders — pharma companies in Munich, SEP holders in Düsseldorf, automotive suppliers in Mannheim. Identifying which assignees in your landscape have already demonstrated UPC enforcement activity — and which haven’t — allows you to weight the enforcement risk appropriately. An active UPC filer holding a patent in your technology space represents a materially higher threat than a passive portfolio holder who has never filed a UPC case.
Weight enforcement risk by UPC vs. national bundle status. European patents can be opted out of the UPC system, maintaining national enforcement only. A landscape analysis should distinguish between UPC-eligible patents — which carry the full pan-European enforcement risk — and national bundle patents still enforced jurisdiction by jurisdiction. The opt-out register is publicly searchable. For the highest-risk competitor patents in your landscape, checking their UPC status is a straightforward step that significantly changes how you weight the threat.
Account for central revocation exposure. The UPC’s Court of Appeal can revoke a European patent across all participating states in a single central revocation proceeding. This cuts both ways. Competitor patents that appear threatening in your landscape may be more vulnerable than they look if a central revocation action could be filed on strong prior art grounds. And your own European patents, if not opted out, are exposed to the same central attack. A comprehensive European landscape needs to assess both enforcement threat and revocation vulnerability.

The Long-Arm Jurisdiction Factor: Fujifilm v. Kodak and Beyond

Here’s a development that many European landscape analyses still aren’t accounting for: the UPC’s reach may extend beyond the 17 participating member states.

In January 2025, the UPC Düsseldorf Local Division ruled in Fujifilm v. Kodak that the UPC has jurisdiction over defendants domiciled in UPC territory even where the infringing acts occurred in non-UPC states — including the UK. The court exercised cross-border jurisdiction under the Brussels I Regulation, extending its reach beyond the standard UPC participating states framework.

The Hamburg Local Division went further in a subsequent preliminary injunction case, granting an injunction that explicitly spanned UPC participating states, Lugano Convention countries — Norway, Switzerland, Liechtenstein — and the UK. The so-called Hamburg ‘sandwich’ injunction demonstrated that the right combination of defendants, distribution channels, and patent scope can extend UPC enforcement to markets that are not themselves UPC participating states.

For landscape analysis: patents in your landscape held by EU-domiciled entities may carry enforcement potential that extends to the UK, Switzerland, and Norway under the emerging UPC long-arm jurisdiction framework. That’s a materially broader risk picture than the 17-state UPC map suggests.

Practical Implications for Pre-Launch FTO Scoping

The relationship between landscape analysis and FTO scoping has always been important. The UPC makes it more consequential.

Here’s the practical sequencing issue: if you run a patent landscape analysis and identify a major patent holder with active UPC enforcement activity in your technology space, the FTO analysis for your European product launch needs to cover all UPC participating states for that holder’s patents — not just your primary European sales market. A Germany-only FTO that clears a product for the German market no longer clears it for pan-European launch when that patent holder has demonstrated the willingness and capability to use the UPC’s pan-European injunction mechanism.

The right sequencing: landscape first, then FTO. The landscape tells you which patent holders in your technology space are UPC-active asserters. That information defines the scope of the FTO — specifically, which patent holders require full UPC-scope analysis versus which holders represent country-specific risk only. Running FTO without the landscape context means scoping blind — potentially under-scoping the highest-risk competitor patents while over-scoping for passive portfolio holders who have never filed a UPC case.

For R&D teams wanting to understand how landscape analysis feeds into smarter product development decisions more broadly, our guide on how patent landscape analysis can enhance your R&D strategy covers the wider strategic framework — including white space identification, competitive mapping, and R&D investment prioritisation.

“A landscape analysis that doesn’t distinguish between a UPC-active asserter with 20 European patents and a passive portfolio holder with 20 identical European patents is giving you a filing density map, not an enforcement risk map. Those are very different things in the UPC era.”

What Product Teams Get Wrong About European Patent Landscapes in the UPC Era

Even teams that run regular patent landscapes are making four consistent mistakes in the post-UPC environment.

Treating the landscape as static. The UPC’s accelerated proceedings timelines — first-instance decisions typically within 12 months — mean that the enforcement threat from a European patent can materialise significantly faster than in the national court era. A landscape run at project kickoff needs to be updated pre-launch. New EPO grants, new UPC filings by identified asserters, and newly published continuation applications can all change the risk picture materially within a 12-month development cycle.
Scoping to primary sales markets only. The UPC’s pan-European effect means that a patent not filed or enforced in your primary sales market can still be asserted against you from a German local division. Limiting the landscape to DE, FR, and Benelux misses the full EPO-granted patent universe that is now enforceable UPC-wide.
Ignoring opt-out status. The distinction between UPC-eligible patents and nationally opted-out patents is publicly searchable — but most landscape reports don’t reflect it. A European patent that has been opted out of the UPC represents a Germany-specific risk (or a country-specific risk wherever the holder has validated it). A UPC-eligible patent represents a pan-European risk. Treating both the same in a landscape output significantly misweights the enforcement threat.
Not monitoring competitor continuation filings at EPO. A competitor filing a continuation or divisional application at the EPO creates a new European patent with pan-European UPC enforcement potential from day one of grant. For technology spaces with high EPO filing activity from aggressive asserters, monitoring continuation filings is a critical early warning mechanism that standalone landscape analysis doesn’t provide.

How Our Landscape Analysis Service Covers the UPC Environment

Our patent landscape analysis is structured for the UPC environment described above — not the pre-2023 national court model that most landscape methodologies were built around.

Every European landscape engagement covers EPO-granted patents across all 17 UPC participating states, with explicit identification of each patent’s opt-out status. We flag patents held by UPC-active asserters — patent holders who have demonstrated a pattern of UPC enforcement in the Munich, Düsseldorf, Mannheim, or Hamburg local divisions — and weight those holdings separately from passive portfolio holders in the landscape output. Long-arm jurisdiction exposure under the Fujifilm v. Kodak and Hamburg precedents is flagged where relevant.

For R&D teams planning European product launches, we structure the landscape output to feed directly into FTO scoping decisions — identifying which UPC-active asserters require full pan-European FTO coverage and which holders represent manageable country-specific risk only. The landscape output isn’t a data report. It’s a risk-weighted strategic brief that tells your team where the real enforcement exposure sits in the European IP environment — and how to scope the FTO analysis that follows.

Launching a product in Europe? A landscape analysis built for the pre-UPC world is measuring European patent risk with the wrong framework. Our landscape analysis service is structured for the UPC enforcement environment of 2026. → Contact Us

Conclusion: The Takeaway

The UPC didn’t change which patents exist in Europe. It changed what they can do. A single European patent, in the hands of an active UPC asserter, can now generate a pan-European injunction covering 17 member states from a Munich or Düsseldorf proceeding. That’s a fundamentally different enforcement instrument than what existed before June 2023.

For patent landscape analysis, the implication is straightforward: scope, risk weighting, and monitoring all need to reflect the UPC reality. Scoping to primary sales markets is no longer sufficient. Treating all European patents equally regardless of UPC eligibility misweights the enforcement risk. Failing to flag UPC-active asserters means presenting a filing density map instead of an enforcement risk map.

The landscape is the same. The risk profile behind it has changed. A good landscape analysis reflects the environment it’s measuring — and the European environment changed in June 2023.

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