Recent U.S. Court of Appeals for the Federal Circuit and USPTO decisions underscore the potential value of challenging a granted U.S. patent in a USPTO proceeding, even if the patent already has been held infringed and/or not invalid in district court litigation. In Fresenius, USA Inc. v. Baxter International, Inc., the Federal Circuit interpreted the ex parte reexamination statutes (35 USC §§ 301-307) as providing that the final cancellation of claims in a reexamination proceeding is binding on concurrent litigation proceedings, as long as the litigation is still pending. In SAP America, Inc. v. Versata Development Group, Inc., the USPTO found that the challenged claims were inva [...]
By order of 16 October 2012 in Sperotto v. Bolpagni , the Court of Turin stated, in line with a few other of its recent decisions, that patent infringement ordinary proceedings (even if including a cross-claim of revocation) must be stayed until the conclusion of EPO opposition proceedings pending on the allegedly infringed patent, in application of Article 120 IP Code.
In fact, Article 120 IP Code literally says something different. In the Italian system, infringement cases can be brought before the grant of the patent, as soon as the patent application has become public or has been served on the alleged infringer. Article 120 IPCode therefore establishes that no ruling in ordinary proceed [...]
The District Court held a patent entitled “Special Alcoholic Drink” invalid, due to lack of novelty and clarity as a non-enabling disclosure. Furthermore, the Court dismissed the invalidity action filed against the Patent Office, holding that it was neither the inventor nor the patent holder and also because it had only taken into account the requirements in accordance with Greek law in its decision to grant the patent. Therefore, this decision could only be challenged in this respect before the administrative court.
A summary of this case will be posted on http://www.KluwerIPCases.com[...]
This past week I had an interesting hearing at the EPO where an opposition was based, inter alia, on public prior use.
The opposition division heard a number of witnesses on the question whether the features of a specific device had been publicly available. Prior to the hearing, the opponent had to admit that there actually had been a written confidentiality agreement between the manufacturer and the purchaser of the machine who then used it in his plant. Furthermore, he admitted that plant where the machine was erected had been secured by a fence and a security service against intruders. However, the opponent contended that third parties occasionally did have access to the plant and the dev [...]
As of September 16, 2012, third parties have been able to make “Preissuance Submissions” of printed publications in pending U.S. patent applications. To date, the USPTO has received just over 100 Preissuance Submissions. This article looks at important timing and disclosure requirements that parties considering making such submissions should keep in mind when deciding whether to take advantage of this new program.
The Statutory And Regulatory Framework
Section 8 of the America Invents Act amended 35 USC § 122 to provide for Preissuance Submissions. The USPTO’s implementing regulations are found in new 37 CFR § 1.290 and revised 37 CFR § 1.291. Key requirements and related st [...]
On September 16, 2012, inter partes review proceedings became available against U.S. patents and post-grant review proceedings became available against certain U.S. business method patents. In two weeks, seventeen petitions for inter partes review have been filed and eight petitions for post-grant review have been filed. This article takes a brief look at these new proceedings.
Inter Partes Review
While similar in principle to inter partes reexamination (which is no longer available), inter partes review is different in many significant respects. Like inter partes reexamination, inter partes review offers a way to challenge a granted U.S. patent based on print publications in a [...]