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Chairman Between the Chairs -The Decision of the Enlarged Board of Appeal R0012/19-

Almost everyday someone posts something about the Unified Patent Court or a seminar is offered about the “newest” developments. In fact nobody is able to predict whether the system will “work”. It is said that in order “to be successful” the system needs to be efficient, speedy and affordable. It is also said that it will largely depend on the qualification and experience of the future UPC judges whether the UPC will be accepted by its “customers”. While this is certainly true to some extent one should keep in mind that it is up to the lawmaker to provide the rules for the proceedings balancing efficiency with justice and -at least evenly important- to provide sufficient fund [...]

More honour’d in the breach than the observance

In a decision dated 11th July 2014, the English Patents Court (Arnold J.) has again refused to stay proceedings to revoke an EP(UK) whilst opposition proceedings are on-going at the EPO. The decisive factor in this decision seems again to have been the lengthy duration of the EPO proceedings. However, the undertakings offered by the patentee were such that it is considered that it will be a rare occasion when English proceedings are stayed despite the Court of Appeal guidelines indicating that this should be the default option.

The facts before the Court were quite simple: Pharmacia is the owner of a patent for sustained release dosage forms of pramipexole, a drug used in the treatment of Pa [...]

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 [...]

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