In 2018 and 2019, the patent law team of Heuking Kühn Lüer Wojtek conducted successful patent nullity proceedings against what is referred to as the “teff patent.” Due to the high public interest, the most important information on this patent and the proceedings is compiled below.
Teff (“Eragrostis tef”) is a type of grain that is an ancient form of millet. Teff, also known as lovegrass, has been cultivated in Ethiopia and Eritrea for more than 5,000 years. The best known use of teff flour is as an ingredient in the Ethiopian and Eritrean national dish Injera.
Teff is gluten-free by nature and rich in proteins, fats, and amino acids. It contains high amounts of vitamins and minerals. Particularly among people with gluten intolerance (celiac disease), it is enjoying increasing popularity worldwide.
The “teff patent” (EP 1 646 287) protects a flour made from teff. The relevant patent specification can be downloaded from the European Patent Office .The official information of the European Patent Office, in particular on the grant procedure, can be found at: register.epo.org.
The scope of protection of a patent is determined by its “claims.” Claim 1 of the teff patent can be structured as follows, with optional characteristics shown in italics and in brackets.
1. A flour
2. of a grain belonging to the genus Eragrostis,
(2.1 preferably Eragrostis tef,)
3. characterized in that the falling number of the grain at the moment of grinding is at least 250
(3.1. preferably at least 300,
3.1.1. more preferably at least 340,
22.214.171.124. most preferably at least 380)
The teff patent application was successful only in Europe. Parallel patent applications in the USA and Japan were rejected by the relevant patent offices.
By letter dated April 26, 2018, we requested the registered patent holder (Port V.O.F. in the Netherlands) to waive the German part of the teff patent by May 30, 2018. The patent holder failed to react.
Our action for annulment was sent on March 29, 2019 and received by the Federal Patent Court on April 1, 2019. With the action for annulment, we are challenging the German part of the teff patent. A copy of the action for annulment can be downloaded here and a (non-certified) English translation here.
The court docked number is: 3 Ni 18/19 (EP). The relevant court notice is available here. Any redactions have been made by us.
In response to the action for annulment, the patent holder waived the German part of the teff patent in a brief dated June 13, 2019. Consequently, there is no longer a teff patent in Germany. This patent waiver has been entered in the official register of the German Patent and Trade Mark Office (see the register extract here).
By letter dated August 14, 2019, we requested the patent holder to drop the other national parts of the European patent as well. Although no response to that letter was received, the patent holder complied with the request. The European teff patent is finally history now.