Revocation of a patent concerns a mechanism which provides for an inter partes review of the validity of a. At the European Patent Office a patent can be revoked by the Opposition Division or Boards of Appeal. A notice of opposition has to be filed within nine months from the publication of the mention of the grant of a European patent. In 2000 Article 105a was introduced in the European Patent Convention, providing centralised limitation and revocation procedures at the level of the EPO, which allows the patent proprietor either to have the claims of his granted patent limited or to have the whole patent revoked for all its designated states. The effect of this central revocation is that the patent in question is deemed never to have existed. It is revoked ex tunc.
by Niels Hölder and Thomas Koch In “Zugriffsrechte” (Access Rights) (docket X ZR 35/11), the Federal Court of Justice decided that a claim can in principle not be construed such that it covers none of the embodiments described in the specification. To simplify the facts, the claim in question specified two process steps. The Federal…
The Italian Supreme Court recently (and surprisingly) said that inventors must be named as co-defendants in revocation actions. In 2010 I wrote a post concerning the requirement to name inventors as co-defendants in Italian revocation actions. I reported that the Court of Appeal of Milan had established a principle whereby named inventors had to be called…
The juxtapositon of patent limitations in national nullity proceedings and before national patent offices on the one hand and according to article 105a EPC on the other hand is a hotly debated issue not only in Switzerland. In a recently published decision of 2 June 2014 (4A_541/2013), the Swiss Federal Supreme Court had to decide –…
Until recently, third parties had not to worry about the date at which they would initiate a patent revocation action in France. However, nowadays, this issue is a hot topic in France. The origin of the current controversy is not recent as it lies in statute № 2008-561 of 17 June 2008 which shortened to 5 years…
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…
and Carissa Kendall-Palmer In HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat), Mr Justice Birss ruled upon the validity and infringement of two telecommunications patents concerning smart/chip card technology. The Claimant came to the High Court of England and Wales seeking revocation of the patents; the Defendant counterclaimed…
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…
The Court of Appeal held that the duty to compensate the successful party’s legal costs in intellectual property proceedings, pursuant to Art. 14 of the Enforcement directive, also applies to invalidity claims, counterclaims and defenses by the alleged infringing party threatened with patent enforcement. To deny such compensation in respect of nullity claims or defenses…
The Supreme Court held that claiming priority of an earlier application requires a direct and unambiguous disclosure in the priority document of all features of the technical teaching as defined in the claims. If the claimed invention is characterized by a particular property of one of its components that has not (clearly) been disclosed in…
