BARDEHLE PAGENBERG’s Post

#UPCdatabase #decisionoftheweek LD Mannheim, April 30, 2024, Order re producing license agreements, UPC_CFI_ 218/2023, UPC_CFI_ 219/2023, UPC_CFI_ 223/2023, #mannheimlocaldivision #art43upca #productionofevidence #sep ! Key takeaways: Plaintiff in infringement proceedings can request an order, directed against themselves, to produce an SEP license agreement with a third party. In accordance with the principle of production of evidence (Art. 43 UPCA), the plaintiff must decide for themselves which submissions they wish to make in the proceedings.: In order to demonstrate that FRAND obligations ...

#UPCdatabase #decisionoftheweek LD Hamburg, 4 June 2024, Procedural Order of the Court of First Instance, UPC_CFI_54/2023 #hamburglocaldivision #localdivision #ordertoproduceevidence #patentproprietor #rule190rop #rule85rop #standingtosue ! Key takeaways: In relation to the proprietor of a European patent there is a rebuttable presumption pursuant to R. 5(a) and (c) that the person shown in the patent register is the actual proprietor of the patent:✓ Nevertheless, the person shown in the register can be ordered to produce evidence according to R. 190 RoP in order ...

#UPCdatabase #decisionoftheweek LD Mannheim, June 27, 2024, indicative decision, UPC_CFI_ 210/2023 #mannheimlocaldivision #claiminterpretation #indicativedecision #latefiling #r13rop ! Key takeaways: Arguments on claim construction to be made with the Statement of Claim: According to R. 13(1)(n) RoP in cases of technically complex subject-matters, the Statement of Claim must already contain the claim construction if the patent in suit is not readily understandable on its own. In case the plaintiff does not comply, further legal issues ...

Good news for European patent application filings -- from April 1, 2024, the European Patent Office will permit #digitalsignatures for document authentication and remove an administrative fee, affecting grants, transfers, and cancellations of patents and licenses. This should make the process of filing a patent application more efficient for busy tech inventors and in-house counsel!

Feb. 27, 2024: The USPTO has published a notice in the Federal Register relating to obviousness which, along with the Manual of Patent Examining Procedure (MPEP), is meant to provide "operable guidance for USPTO personnel when applying the law of obviousness." The guidance is based on "post-KSR precedential cases" of the Federal Circuit. The notice states it is meant to "provide a review of the flexible approach to determining obviousness that is required by KSR Int'l Co. v. Teleflex Inc. (KSR)" and "provide further clarification for decision-makers on how the Supreme Court's directives should be applied." Further, the document stresses a "flexible approach to the obviousness determination" but also "emphasizes the need for a reasoned explanation when reaching a conclusion that a claimed invention would have been obvious." The notice can be found here: https://lnkd.in/e2Eb4xtw #USPTO #patents #obviousness

How do you appeal a PTAB decision if you lost an IPR and the patent owner previously sued you for infringement but dismissed the case with prejudice? The Federal Circuit's recent decision in Platinum Optics v. Viavi Solutions shows that you need more than a statutory right to appeal - you also need constitutional standing. The Federal Circuit found that neither prior lawsuits nor vague plans for new products were enough to establish constitutional standing. Takeaway: If you want to challenge a patent's validity at the PTAB and preserve your right to appeal, take some steps during the IPR to show that you have a current or imminent risk of infringement. https://lnkd.in/eeTxMKhn

Don’t risk your case on outdated information. Rely on the most current statutes and rules from the official publisher, along with topical titles supporting practice area research in Colorado. Browse the collection below. #LexisNexis #ColoradoLaw #ColoradoBusiness #LawBooks

𝐄𝐏𝐎 𝐒𝐢𝐠𝐧𝐚𝐭𝐮𝐫𝐞𝐬: 𝐔𝐏𝐃𝐀𝐓𝐄   Some perhaps remember my post a few months back related to the BoA decision rejecting an e-signed assignment – and thereby basically taking a stricter approach to EPO signature requirements: https://lnkd.in/d7RFrk6M   👍 It’s therefore very positive to see the recent EPO announcement (link below): as of April 1, 𝐞-𝐬𝐢𝐠𝐧𝐚𝐭𝐮𝐫𝐞𝐬 𝐰𝐢𝐥𝐥 𝐛𝐞 𝐚𝐥𝐥𝐨𝐰𝐞𝐝 𝐟𝐨𝐫 𝐭𝐡𝐞 𝐫𝐞𝐠𝐢𝐬𝐭𝐫𝐚𝐭𝐢𝐨𝐧 𝐨𝐟 𝐭𝐫𝐚𝐧𝐬𝐟𝐞𝐫𝐬 𝐨𝐟 𝐫𝐢𝐠𝐡𝐭𝐬 𝐚𝐧𝐝 𝐥𝐢𝐜𝐞𝐧𝐜𝐞𝐬 𝐟𝐨𝐫 𝐄𝐏 𝐚𝐧𝐝 𝐔𝐏 𝐩𝐫𝐨𝐜𝐞𝐝𝐮𝐫𝐞𝐬. In addition, 𝐭𝐡𝐞 𝐚𝐝𝐦𝐢𝐧𝐢𝐬𝐭𝐫𝐚𝐭𝐢𝐯𝐞 𝐟𝐞𝐞 𝐰𝐢𝐥𝐥 𝐛𝐞 𝐚𝐛𝐨𝐥𝐢𝐬𝐡𝐞𝐝 𝐢𝐟 𝐭𝐡𝐞 𝐫𝐞𝐪𝐮𝐞𝐬𝐭𝐬 𝐚𝐫𝐞 𝐟𝐢𝐥𝐞𝐝 𝐢𝐧 𝐌𝐲𝐄𝐏𝐎 𝐏𝐨𝐫𝐭𝐟𝐨𝐥𝐢𝐨.   A move in the right direction, which will make lives a bit easier both for applicants and agents – and in particular the patent paralegals usually facilitating this process! 🤓📜   https://lnkd.in/dNCW2Gq5   (Thanks a lot to Rodica Tache for the heads up!! 🤩) #PatentParalegal #PatentAdministrator

#UPCdatabase #decisionoftheweek LD Mannheim, 13 June 2024, Order of the Court of first instance, UPC_CFI_219/2023 #localdivision #mannheimlocaldivision #extensionofdeadline #frand #infringementaction #protectionofconfidentialinformation #r262arop ! Key takeaways: Extension of time limit (only) for response to redacted FRAND submission: Claimant filed its reply brief with heavy redactions re. the FRAND part. Hence, upon Defendant’s request, the deadline for filing its rejoinder brief was extended as it relates to these redactions. However, as the parts re. infringement and validity of the patent were not ...

The European Patent Office's online services work very smoothly for most of us and we become ever more dependent on them for making filings and paying fees within the legal deadlines. But you never know when you might have a last-day filing to make, and something breaks down... 😱 What's your 'Plan B' for time-critical filings? 🤔 For time-critical fees? 😬 Check out my article in epi Information for tips on the replacement service 'CUS', and how to pay fees in an emergency. Get to know the system BEFORE you really need it... 😎 https://lnkd.in/e-KG-AYU