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Gemalto’s UK appeal dismissed

by Naomi Hazenberg and Brian Cordery

On Wednesday 22 October 2014, the Court of Appeal (Ref [2014] EWCA Civ 1335) has upheld Birss J’s decision last year in HTC v Gemalto (Ref [2013] EWHC 1876 (Pat)) but has found that he erred on a point of construction. The appeal concerned just one of the patents considered at first instance (EP (UK) 0932865) which relates to using higher level programming with a microcontroller. Only claim 3 (and its dependent claims) survived the attack on validity at first instance and HTC’s devices were held not to infringe.

At first instance, the judge needed to construe the term “microcontroller”. As it was not an expression used in ordinary English, expe [...]

‘Real discussion on Unitary Patent renewal fees has not started yet’

‘The unitary patent (UP) package is a strange animal.’ Margot Fröhlinger has no problem admitting that. As Principal Director Patent Law and Multilateral Affairs of the EPO she is closely involved in implementing the new patent system, which is expected to become operational in 2016. It is a complicated political compromise, based on both EPC rules and EU and national law. Although there are concerns about costs and the quality of the future Unified Patent Court (UPC), she is confident it is an important step forward for the European business sector.  Kluwer IP Law spoke with Fröhlinger at a UP Congress on Friday 17 October in Brussels.

What can we expect from the EPO Select Committee [...]

Can the validity presumption in Danish PI proceedings be weakened due to lacking prosecution steps?

Since July 2013 when the Danish Maritime & Commercial Court (MCC) took over as IPR specialty court in Denmark for PI cases also, the technical judges have taken part in the adjudication of PI patent cases also. Although the MCC has no legal basis to render judgement declaring patents in the course of PI proceedings, the fact that the bench is now made up of one legal judge and two technical judges in practice means that a well-documented invalidity defence may prove fruitful, whereas the invalidity defences in the past were almost invariably turned down by the bailiff’s who presided over patent PI cases due to the court’s lack of technical insight.
In a recent case (F&H A/S v. Bodum (Skandin [...]

New “PCT Direct” Service of the EPO – an opportunity for PCT applicants at the EPO to comment on objections raised by the EPO in an earlier search

Under the new PCT Direct initiative announced in the Official Journal, it will, from 1 November 2014, be possible to respond to objections raised by the EPO against the priority application on filing the international application. This significantly streamlines the process of applying for an international application, and essentially gives the applicant an extra opportunity in the International Phase to overcome objections already raised by the EPO against the priority application, by submitting arguments or modifications with the international application.

The suspension of the enforcement of an infringement judgment following the non-final nullification of the patent is now the rule – Bundesgerichtshof on bifurcation

by Hetti Hilge

In two recent and surprising decisions the Bundesgerichtshof (German Federal Court of Justice) clarified the effects of a first instance decision nullifying the patent in suit on the enforcement of a parallel infringement finding (including an injunction) and, upon second review, remedied what it considers an unintended oversight by the legislator (“Planwidrige Regelungslücke”) in the specific circumstances of patent litigation and bifurcation. Effectively “overruling” its own previous decision in the very same case (Microsoft vs Motorola), the court now ordered the temporary suspension of the enforcement of an appeal court judgment finding for infringement, against t [...]

‘Renewal fees of the unitary patent are not meant to sustain national patent offices’

‘It’s one big mess.’ At times Emil Pot, co-founder and general counsel of biopharmaceutical company ActoGenix, had difficulty containing his frustration at the Congress on the EU patent package, which took place at 17 October 2014 in Brussels. The issue: the discussion on determining the renewal fees of the future unitary patent (UP), and – on top of that – the fact the crucial European markets are not part of the unitary patent regulation.

The level of the UP renewal fees is seen by many as crucial for the success thereof. Earlier that day, Margot Fröhlinger, Principal Director Patent Law and Multilateral Affairs of the EPO, said two criteria were important: On the one hand, low [...]

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