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Can the clarity of amended claims be challenged in an unrestricted manner in opposition proceedings? – T 373/12 refers four questions to the Enlarged Board of Appeal

In decision T 373/12 of 2 April 2014 the Enlarged Board has been asked to decide on the extent to which the clarity of claims amended during opposition proceedings and opposition appeal proceedings can be challenged when the amendments are based on dependent claims as granted.

Inter Partes Review Proves To Be Useful Mechanism To Invalidate U.S. Patents

Last week, the Patent Trial and Appeal Board of the U.S. Patent Office (PTAB) issued eight decisions in Inter Partes review and Covered Business Method proceedings, in each case invalidating at least some of the challenged claims of the patent at issue. That brings to 15 the total number of patents invalidated in an Inter Partes review or Covered Business Method proceeding since those proceedings became available on September 16, 2012, and keeps at 0 the number of proceedings decided in favor of the patent holder.

While many aspects of post-grant proceedings are still evolving, we have seen enough interim rulings and final decisions to draw a few general conclusions.

  • The vast majority of [...]
Post Grant Proceedings In The USPTO

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 [...]

Infringement proceedings must be stayed in case of pending opposition proceedings, says the Court of Turin

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 [...]

Special Alcoholic Drink, Multimember District Court Athens (Polymeles Protodikio Athinon), 29 April 2011

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

Public prior use – Still a Gordian knot in opposition proceedings

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 [...]

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