EU IP-PorTal’s Post

In a recent decision, the Unified Patent Court (UPC) followed the European Patent Office’s (EPO) stance on the 'rebuttable presumption' of priority rights, as established in the recent G1/22 and G2/22 decisions. In the case of Meril v. Edwards Lifesciences, the UPC's Paris Central Division applied this standard, reinforcing the idea that a patent proprietor’s right to claim priority is presumed valid unless convincingly challenged by an opponent. This puts the burden of proof squarely on the challenger to demonstrate that the original applicants intended to retain priority rights or assigned them elsewhere, a challenging task without specific evidence. Full analysis can be found from Thomas Prock, Mike Gilbert and Abigail Spreadbury below. https://lnkd.in/edgwhtcC #intellectualproperty #intellectualpropertylaw #UPC #unifiedpatentcourt #patents

June 1, 2024 marks the first anniversary of the #UPC and the Unitary Patent. Maiwald takes this opportunity to review the last twelve months, take stock, share experiences and address upcoming challenges in a series of monthly publications by our UPC experts which will accompany you through another promising year with this unique, unified patent and court system.  >> Take a look at our latest article in our Maiwald UPC update for more information: https://lnkd.in/dFsPqNQV #TeamMaiwald #UnitaryPatent

The UPC yesterday handed down its second-ever merits decision, again meeting its target to deliver a judgment within a year of proceedings being issued. The Paris Local Division took an EPO-style approach to assessing invalidity and explores some jurisdictional points in its Dexcom v Abbott judgment. In summary:   - While there is a principle that the parties should govern the subject matter of the dispute, this principle cannot restrict a defendant in its challenge to the validity of a European patent that is being asserted against it. - The "unambiguous disclosure" test was applied to find the patent to be novel over the prior art. - The "problem and solution" test was applied to find that the patent was invalid for lack of inventive step. 

The Central Division, Paris Seat, of the Court of First Instance of the UPC has issued two notable decisions concerning patent revocation earlier this week: UPC CFI 315/2023 and UPC CFI 309/2023. The first decision reaffirmed the front-loaded nature of UPC proceedings, underscoring that parties must present their complete case at the earliest possible stage; failure to do so may result in the exclusion of arguments. The second decision clarified that in a patent amendment application, a proposed claim set is either allowable (as such / complete claim set proposed) or not. These rulings illustrate that parties engaged in UPC proceedings must be thoroughly prepared from the outset, and any patent amendment proposals must be drafted with precision and clarity in their entirety. #UPC #patents #patentlitigation

Claim interpretation using the description: Referral to the EPO Enlarged Board of Appeal Following on from our previous article on the appeal case T439/22, the European Patent Office (EPO) Board of Appeal (“the Board”) has now confirmed a referral to the Enlarged Board of Appeal (“the Enlarged Board”) on if, and under what circumstances, the description of a patent specification can be used to interpret the language of a claim. Find out more: https://lnkd.in/e5H8gkwc #intellectualproperty #IPLaw #EPO #EU #EPOEnlargedBoardofAppeal

This issue of The PTAB Review begins by providing an analysis of how institution decisions consider declaration testimony submitted by a patent owner. Next, it summarizes proposed rulemaking from the United States Pate...

Does the UPC offer a fresh take on patent validity? A distinctive UPC approach to patent validity and revocations is emerging as the court shows its willingness to break new ground, say Emily Bottle and Sebastian Moore of Herbert Smith Freehills. Read the full article here: https://ow.ly/kuzf50TgGf2 #UPC #PatentValidity #IntellectualProperty

USPTO issues final rule on the Director Review process, effective on October 31, 2024. The Director Review process is an important way for parties to request rehearing of certain PTAB decisions. The final rule formalizes key aspects of the interim Director Review process and provides that a party to an AIA proceeding may request Director Review in that proceeding of any: 1. decision on institution  2. final decision (defined as a final written decision in an inter partes or post grant review proceeding or a final decision in a derivation proceeding)  3. decision granting rehearing of a decision on institution or a final decision  4. other decision concluding an AIA proceeding It is also worth remembering that Director Review is a process taken in response to the 2021 Supreme Court decision in United States v. Arthrex holding that the structure of the Patent Trial and Appeal Board (PTAB) violated the Appointments Clause of the Constitution.

Revised version of #MPEP #USPTO

Currently, excess claims fees in Australia are calculated based on the number of claims at the time of acceptance (AU$125 for each claim between 21 and 30, and AU$250 for each claim beyond 30). However, from 1 October 2024 excess claim fees will be determined based on the number of claims when the first examination report issues. This change applies to all patent applications where examination is requested on or after this date. To avoid this change and have all claims considered in the first examination report without incurring excess claim fees, examination of pending applications with more than 20 claims should be requested by 30 September 2024. For examination requests after this date, the number of claims can be reduced before issuance of the first examination report to reduce/avoid excess claim fees. While the Australian Patent Office plans to give a six-month warning, it is advisable to file amendments at the time of requesting examination, or shortly thereafter.