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- Written by: Mathias Ingold
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Patent portfolio management in a broad sense relates to strategic organization, evaluation, and utilization of the patents owned by a company or an individual. The goal is to optimize the economic value of the patent portfolio while minimizing patent-related costs and legal risks. A well-managed patent portfolio aims at protecting technologies, products and services and thereby to block competitors from entering the market with same or similar technologies, products and services. Patent portfolio management also encompasses the systematic monitoring of third-party patents, a licensing strategy (both for licensing-out own patents and licensing-in third-party patents), patent enforcement, and patent portfolio assessments in mergers, acquisition and partnerships.
Patent portfolio management is an inter-disciplinary task, that involves legal, technical and market expertise. Regular patent portfolio reviews should therefore be conducted jointly by the patent owner together with a patent attorney to assess and update the technical and business relevance of the patents:
- The patent attorney provides the legal aspects, such as scope of protection (based on claims before and after grant or after invalidity proceedings), legal status (patent family members, pending application(s), granted patent(s), opposition(s), enforcement, expiries), and cost estimates (for patent prosecution and maintenance per country).
- The patent owner provides the technology-related aspects, such as the status of development of the related technology or product, product modifications, technical trends, and the technical development roadmap.
- The patent owner further provides the market-related aspects, including the desired geographic coverage, technical solutions implemented in competitors’ products, and suspected patent conflicts.
As a result of patent portfolio reviews, informed decisions can be made about maintaining or dropping patents, filing new patent applications, expanding the country coverage (within certain time limits), reducing the country coverage, and thereby shaping the patent portfolio to the actual needs and managing the patent costs.
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- Written by: Oliver Jeker
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Why Opposition Proceedings before the European Patent Office Matter More Than Ever in the Unitary Patent Era
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- First published 14 November 2025
Since the introduction of the Unitary Patent and the Unified Patent Court (UPC) in 2023, the landscape of patent protection and challenge in Europe has shifted. For patent holders, competitors, and all stakeholders in innovation, opposition proceedings before the European Patent Office (EPO) have become strategically more relevant.
What Are Opposition Proceedings?
After a European patent has been granted, any person other than the proprietor can file an opposition within nine months. The goal is to challenge the validity of the patent based on the possible grounds of patentability (typically lack of novelty and inventive step), insufficiency of disclosure and added matter.
The patent may be maintained as granted, amended (narrowed), or revoked. The decision has effect retroactively for all designated states. The opposition is thus a powerful and cost-effective mechanism compared to fighting invalidity state by state.
Why Is Opposition Gaining Importance?
The unitary patent system introduces a centralized litigation for European patents, but it does not replace opposition proceedings at the EPO. Instead, it co-exists, and in many ways even increases the stakes in opposition.
1. Broad Impact, Centralized Action
After grant of a European patent, a proprietor may request unitary effect, thereby getting unitary patent protection in currently 18 EU Member States. A single opposition at the EPO can thus have a broad territorial impact – making it the most efficient way to challenge such a Unitary Patent at an early stage.
2. Cost-Effective and Predictable
Compared with newer UPC revocation actions, EPO opposition remains the tried-and-tested path – procedurally familiar, well-understood, and significantly less expensive. For many businesses, it is the logical first step to “clearing their way”.
Conclusion
The Unitary Patent System has not diminished the importance of opposition proceedings at the EPO – rather, it has made them more central to patent strategy in Europe. For opponents and patentees, the opposition system remains a powerful, affordable, and territorially-broad tool to shape patent validity. The nine-month post-grant period might feel long, but it’s a window of opportunity that should not be missed.
To learn more, please feel free to reach out.
Oliver Jeker
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- Written by: Fabio Versolatto
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We often hear clients ask questions like this: 'We are about to launch product Y and service Y under the brand name Z, so we must register Z as a trademark. Otherwise, we cannot use it.'
The short answer is: not quite.
A trademark does not give you a “license to use” your brand. Instead, just like a patent, it gives you a defensive right, letting you stop others from using the same or a similar brand name for similar goods or services. Think of it less as a permission slip and more as a tool to protect your territory.
Step 1: Check before you file
Before registering a brand name, the most important step is to ensure that you are not infringing anyone else's rights.
In other words: Is there already an older trademark out there that could conflict with yours?
It is your responsibility to find out, and this is usually done by searching the relevant databases based on your target markets and the types of products or services (classes) you are offering. Only when you are confident that there are no conflicts should you move on to the next step.
Step 2: Should we register our trademark at all? What is the real value?
Strictly speaking, you do not need a registered trademark just to use a name or logo for business purposes. However, be careful: using the ® symbol or claiming trademark rights without an actual registration is not allowed.
So, what does a registered trademark actually give you? Borrowing a medieval metaphor, a trademark is like a knight's sword and shield.
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The shield (defense): Once your trademark is registered, it appears in public databases. This alone can deter others. When someone checks whether a name is available, as they should, your trademark may prevent them from choosing a similar name. |
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The sword (offence): If someone uses a name that is too similar to yours, whether by mistake or on purpose, you have the legal right to stop them. You can demand, for example, that they stop using it and remove any infringing materials. |
This is the main benefit of trademark registration: preventing copycats and protecting your market share.
When might you not need a trademark?
You might decide a trademark is not worth the investment if you are okay with competitors using similar or even identical brand names and are not interested in the legal tools to stop them (or are not capable of doing so).
However, if exclusivity, protection and long-term value are important to you, a trademark is often a smart move.
Bonus: you can monetize a trademark!
As well as providing protection, a registered trademark is also an intangible asset. You can assign (transfer) a trademark to others for a fee or license it to others in exchange for permission to use it. This means that your brand can generate revenue as well as defend against risk.
In short, you do not have to register a trademark. However, if you value protection, peace of mind and growth potential, it could be one of the best investments you can make.
RENTSCH PARTNER is here to provide advice and support. Simply contact us.
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- Written by: Thomas Wyder and Zoltán Gyenge
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How to Cash in Your Chips: Patent Them and/or Keep Them Secret?
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- First published 11 August 2025
A blog series by Zoltán Gyenge and Thomas Wyder
(Software Practice Group at Rentsch Partner)
In Part I of this blog series, we explored how the Enlarged Board of Appeal’s landmark decision G 1/23 refined the “disclosure test” under the EPC, recognizing de facto disclosure, associated with factual availability, as prior art while maintaining the higher standard of enabling disclosure for patentability.
In Part II, we examined how a “grey box” phenomenon arises in relation to different levels of transparency associated with embedded firmware. Typically, the internal logic of a product running with embedded firmware remains hidden, while its observable behavior is sufficient to constitute prior art under the European Patent Convention (EPC). In Part III, we move to the domain of advanced semiconductor devices, where the same legal principle meets one of the most technologically demanding industries.
The Scenario: 1-Nanometer Chips on the Market
At the time of writing (August 2025), the most advanced chips available on the market rely on 3-nanometer process technology. Research at even smaller scales is being performed worldwide, but no one is currently able to produce functional chips at the 1-nanometer scale.
Let us assume that an innovative company makes a breakthrough and succeeds in fabricating a 1-nanometer semiconductor chip using a proprietary process. Said company places the chip on the market. Subsequently, competitor files a patent application, which receives an effective date. At this date, the physical structure of the chip can be fully analyzed using the best microscopy and spectroscopy techniques available, which would allow the skilled person to understand its layout and internal architecture in detail. However, no known fabrication technology exists at this time which would allow the skilled person to reproduce such a chip.
This scenario mirrors the firmware example from Part II but now in the context of cutting-edge hardware: the chip is publicly available and analyzable, yet this piece of hardware for far remains irreproducible.
The Disclosure Double Standard of G 1/23
The sketched semiconductor scenario allows bringing the double standard emerging from G 1/23 into focus.
- No Requirement of Reproducibility for a Product to Constitute Prior Art
Following the Enlarged Board of Appeal’s decision in G 1/23, the public availability of the chip is sufficient for it to constitute prior art. Whether the skilled person can reproduce the product is irrelevant for the question as to whether it constitutes prior art. The market release of the 1nanometer chip therefore blocks competitors from patenting of the same chip structure, even though the public has not received any information that would allow reproduction. - Enablement Requirement for Patentability
The asymmetry becomes evident when considering that if one were to file a patent application for the chip, even if the claims were directed only to the chip structure, the application would need to meet the enablement requirement of Article 83 EPC. The skilled person must be able to put the invention into practice without undue burden. This effectively means that the manufacturing method must be disclosed to obtain a patent.
This leads to a stark contrast: Simply placing the chip on the market suffices to prevent competitors from patenting the chip structure, but obtaining a patent would require laying open a fullly enabling disclosure. Thus, deciding not to patent a chip and to instead just put it on the market effectively constitutes a decision: ´If I do not patent it, no one can´.
Implications for Practitioners: Patent your Chip and/or Keep it Secret?
For semiconductor innovators, the practical consequences are significant. Now, more than ever before, an informed decision needs to be taken in advance, prior to putting a new chip on the market, by balancing several strategic tools:
- which aspects to cover by a patent application;
- which aspects of the chip to keep secret; and
- which information to publicly disclose about the chip, to fine-tune your de facto disclosure to establish hurdles limiting competitors in their own patenting endeavors.
Filing a patent application secures enforceable rights but forces the applicant to reveal the manufacturing method, which competitors could study and build upon.
Maintaining trade secrets preserves confidentiality but offers no active rights against copycats, should they eventually develop the capability to reproduce the chip independently.
Putting a new chip on the market, thereby creating de facto disclosure, and, if desirable, purposefully enhancing said de facto disclosure by adding selective pieces of information, can be used to strategically craft the balance between the difficulties competitors face in developing themselves vs. claiming any new invention.
In summary, a hybrid IP strategy for chips may be advisable. Companies could file selected patent applications on reproducible sub‑processes or chip elements which mature into enforceable patents, while maintaining trade secrets for the most critical fabrication steps that cannot be reverse engineered.
Planning the strategy must take place well before the first commercial release of a next‑generation chip. The sketched hybrid approach would safeguard against a competitor later patenting the chip, thereby proactively reducing the risk of future infringement claims against the chip itself.
Moreover, if a competitor were to independently develop and patent a manufacturing process for the same chip at a later date, the company who had previously put the chip on the market can rely on the so‑called right of continued use of its existing process. This would allow continued practice of the process without infringing a patent based on a later filing, though such a strategy must be approached cautiously, as the right of continued use is to be construed narrowly and the precise terms are fact‑dependent in view of the respectively applicable national law.
Shifting the Balance in the Contract Theory of Patents
The contract theory of patents holds that the state grants a time‑limited monopoly in exchange for a technical teaching that enriches the public domain. This quid pro quo works well in two clear-cut cases:
- Black boxes, which are entirely opaque. They do not constitute any meaningful prior art and do not prevent others from filing patents with an enabling disclosure.
- Transparent boxes, which are fully analyzable and reproducible. They form part of the state of the art and prevent future patents, but in return the public gains an enabling teaching that fuels cumulative innovation.
The 1-nanometer chip scenario belongs to a third category (introduced already and discussed in Parts I and II of this blog series): the grey box. The chip is publicly available and analyzable, so it prevents later patents. Yet it remains irreproducible, offering no enabling disclosure to society.
By releasing a grey box product, a company can undermine the incentive to disclose without providing the public with a corresponding technical benefit. The risk is that step‑by‑step market releases could eat away at the public interest. They may preclude future patenting opportunities without fulfilling the quid pro quo that the patent system is designed to maintain.
Conclusion
For companies working at the forefront of chip technology, what was put down by the Board of Appeal in the landmark decision G 1/23 is more than a theoretical nuance. It challenges long‑standing intellectual property strategies that traditionally relied on a predictable balance between patenting and trade secrets. The old playbook of patenting groundbreaking developments as broadly as possible may no longer be sufficient or optimal. Relying on a more subtle interplay between patents and trade secrets, i.e., which elements to disclose and which to keep confidential, and optimizing the strategy before market release of a new chip now appears favorable.
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- Written by: Thomas Wyder and Zoltán Gyenge
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Embedded Firmware in The Matrix: Is Disclosure just an Illusion?
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- First published 30 July 2025
A blog series by Zoltán Gyenge and Thomas Wyder
(Software Practice Group at Rentsch Partner)
In Part I, we explored how the Enlarged Board of Appeal’s landmark decision G 1/23 refined the “disclosure test” under the EPC, recognizing de facto disclosure, associated with factual availability, as prior art while maintaining the higher standard of enabling disclosure for patentability.
Let us assume a consumer electronics product (e.g., a smart speaker or router) is commercially available before the filing date (effective date) of a patent application. The product contains embedded firmware stored in read-only memory and which has various functions. The firmware is deployed in compiled form only and its logic is not publicly documented.
While extracting and analyzing the firmware would theoretically be possible and the device’s external behavior (e.g., response to commands, communication protocols) is observable by users, the internal software logic of the device cannot be reproduced.
The Disclosure Double Standard of G 1/23
The above-sketched scenario concerning the consumer product with embedded firmware allows bringing the disclosure double standard emerging from G 1/23 into sharp focus:
- No Requirement of Reproducibility for a Product to Constitute Prior Art
Applying G 1/23, a publicly available device as such constitutes prior art including the firmware’s observable functions, as in G1/23, the Enlarged Board clarified that a product’s composition or internal structure need not be reproducible for the product to form part of the state of the art under Article 54(2) EPC.
In the sketched scenario, the device is publicly available and any observable functionality of the firmware, such as its outputs, UI behavior, or network interactions, qualify as technical information made available to the public. The internal mechanisms may remain opaque, but the device itself is a de facto disclosure. In other words there is no legal fiction of its inexistence as prior art due to lack of reproducibility.
G 1/23 makes it clear that what matters is factual availability, not whether the product can be reverse engineered to a degree which would enable reproducibility. Therefore, any objectively discernible behaviors (even if derived indirectly from use or testing) become part of the state of the art, regardless of whether the internal software logic can be reproduced.
- Enablement Requirement for Patentability
In contrast, if an applicant tries to patent the same internal software logic as implemented in the firmware, the European patent application must meet the enablement requirement under Article 83 EPC. The claimed invention would need to be disclosed in a manner sufficiently clear and complete for the skilled person to put it into practice, that is, to reproduce the functionality without undue burden or inventive effort.
In practice, this means that patent protection of embedded firmware prerequi-sites disclosure of the internal software logic, of the technical implementation, sufficient to enable a skilled person to reproduce the claimed subject-matter.
Implications for Practitioners
Patent professionals must recognize that functionality deployed in the firmware of publicly available products counts as prior art, even if it is not reproducible by a person skilled in the art. Observable functionality becomes part of the public domain upon release of the product. Therefore:
- Patent claims to functionality of firmware must be carefully assessed against the behavioral footprint of publicly available products, respectively their own potentially hidden firmware.
- Enablement remains a hard requirement: even if the claimed functionality is known from prior art products, an enforceable patent claim must be backed up by enabling disclosure of a reproducible implementation.
In conclusion, it appears that following the Enlarged Board’s decision in G 1/23, a publicly available product, effectively associated with the disclosure of features at a level of detail which, if included analogously in a patent application, would be considered a result to be achieved will prevent the patenting of a technical implementation of the same feature later on.
Shifting the Balance in the Contract Theory of Patents
One of the basic theories behind the patent system is the so-called “the contract theory of patents”: the state grants a time-limited monopoly in exchange for disclosure. The terms of the (fictitious) “contract” which a patent represents, are: Teach the public how your invention works, and in return, enjoy a period of exclusivity. Upon expiry of the period of exclusivity, the public is free to use your work. Moreover, the public can immediately learn from your (enabling) disclosure.
The time-limited monopoly as a reward for disclosure is intended specifically to disincentivize reliance on trade secrets as the primary means of protecting technological innovation. By requiring an enabling disclosure, the patent system fosters society’s cumulative progress of technology and promotes that technical knowledge enters the public domain.
The balance in the contract theory of patents appears to be maintained when either dealing with:
- Black boxes: Products that are not analyzable at all using common general knowledge. These do not constitute prior art and do not block anyone from patenting later on. They remain legitimate targets for subsequent patent applications comprising enabling disclosures.
- “Transparent” boxes: Products whose inner workings are fully analyzable and reproducible. They block anyone from patenting later on, but they do so by providing the public with a technical teaching, fostering society’s cumulative progress of technology.
However, G 1/23, when applied to grey box products that are publicly available and partially analyzable, but not reproducible, opens up a troubling possibility:
A company may now release a product on the market with firmware implementing novel functionalities, keep the technical teaching secret, but is nevertheless still able to limit others in patenting the same invention. Thus, the balance in the contract theory appears to have shifted against the public interest.
This is not mere theory. It is particularly relevant for embedded firmware and software-driven devices, where:
- The product's behavior is externally observable, making certain technical features analyzable;
- The internal software logic remains hidden, e.g., in compiled form;
Conclusion
The application of G 1/23 to products comprising embedded firmware reveals a significant revision to how prior art is assessed under the European Patent Convention. The decision holds that factual availability (i.e., de facto disclosure), not reproducibility (enabling disclosure), determines whether a product forms part of the state of the art. Consequently, products with embedded firmware, whose behavior is externally observable but whose internal logic remains unreproducible (coined “grey boxes” in this blog), can prevent later patenting by anyone despite the fact that there was no reveal of any reproducible technical teaching to the public.
This development invites reflection on the so-called contract theory of patents, whereby exclusive rights are granted in exchange for the disclosure of inventions to the public. When grey boxes are put on the market, the possibilities of patenting such products is limited for the future and, hence, the incentive for patenting and disclosing an invention to the public is reduced, without the public being privy to a new technical teaching. Thus, one may be tempted to conclude that step-by-step disclosure of chunks without achieving overall enabling disclosure allows eating away at the public interest. In summary, the question is raised whether the traditional balance between disclosure incentive through state-granted monopoly and public benefit still holds in technology domains where reproducibility cannot be readily achieved from what is publicly analyzable.