Manual IP News and Unitary Patent News edited by Arnold & Siedsma
 
Unified Patent Court News edited by Bristows
 
Kluwer Copyright Cases edited by IViR
 
Kluwer Patent Cases edited by Brinkhof
 
IP Law Daily - Selected US Cases edited by CCH
 
Volume 2022 - Issue 13
June 2022
 
 
 

News

 
General Information (6)
 
 
Eurasian Patent Office to increase official fees
 
The Eurasian Patent Office (EAPO) will implement the increased fees applicable for pending Eurasian patent applications with effect from 1 July 2022.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
Eurasia Full text
 
 
 
 
 
EPO launches MyEPO Portfolio
 
On 1 June 2022, the European Patent Office (EPO) launched a new web-based online service called MyEPO Portfolio for its users.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
European Patent Organization Full text
 
 
 
 
 
EUIPO further extends time limit for Ukrainian users
 
The European Union Intellectual Property Office (EUIPO) has further extended the time limit exemption granted to Ukrainian users in IP-related proceedings.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
European Union, Ukraine Full text
 
 
 
 
 
Taiwan inks IP deal with India
 
On 6 June 2022, Taiwan and India completed the exchange of diplomatic instruments under the Taiwan-India memorandum of understanding on Intellectual Property Rights.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
India, Taiwan Full text
 
 
 
 
 
USPTO reopens all office locations
 
On 25 May 2022, the United States Patent and Trademark Office (USPTO) announced that it has entered Phase 3 of its reopening plan.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
United States of America Full text
 
 
 
 
 
USPTO issues memorandum on AAPAs
 
On 9 June 2022, the United States Patent and Trademark Office (USPTO) issued a memorandum to clarify its interpretation of Section 311(b) of Title 35 of the United States Code and how it will impact applicant-admitted prior art (AAPA) in inter partes reviews (IPRs).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
United States of America Full text
 
 
 
 
 
Patents/Utility Models (4)
 
 
Almost fifty years of creating a European patent court
 
The first attempts to create a European patent court date back as far as 1975, and the process to get the Unified Patent Court off the ground has been characterized by delays and setbacks. Still, 2022 seems to be the year that the UPC will finally see the light of day.

This is explained in an article by The European. ‘The current provisional application period is of enormous importance for the harmonization of European patent law. If everything goes according to plan, the UPC will be able to start in spring 2023.’

For more information (German language) please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent News Date: 27 Jun 2022
 
European Union Full text
 
 
 
 
 
Language use at the UPC
 
Proceedings at the central division of the Unified Patent Court will be in the language in which the patent was granted.

This is explained in an article by EIP.

Proceedings at the local/regional divisions will be in either an official language of the member state in which the division is located, or in an official language of the EPO provided the member state has so designated, or in the language in which the patent was granted (on agreement by the parties).
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 27 Jun 2022
 
European Union Full text
 
 
 
 
 
USPTO to end ISA/IPEA deal with Rospatent
 
The United States Patent and Trademark Office (USPTO) on 1 June 2022 informed the Russian Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) that it will terminate their bilateral agreement under the Patent Cooperation Treaty.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
United States of America, Russian Federation Full text
 
 
 
 
 
USPTO launches Climate Change Mitigation Pilot Program
 
On 3 June 2022, the United States Patent and Trademark Office (USPTO) issued a notice in the Federal Register to implement the Climate Change Mitigation Pilot Program with immediate effect.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
United States of America Full text
 
 
 
 
 
Trademarks (4)
 
 
Czech Republic accedes to Geneva Act of Lisbon Agreement
 
On 2 June 2022, the Government of the Czech Republic acceded to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications ("Geneva Act") by depositing its instrument of accession with the World Intellectual Property Organization (WIPO).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
Czech Republic Full text
 
 
 
 
 
Japanese IP Office joins Madrid e-Filing community
 
On 1 June 2022, the Japan Patent Office (JPO) launched Madrid e-Filing system for its national applicants who want to protect their marks abroad under the Madrid Protocol Concerning the International Registration of Marks, thus becoming the 17th intellectual property office to offer this facility.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
Japan Full text
 
 
 
 
 
Kenya postpones recordals of IP rights for imports
 
On 24 May 2022, the Kenyan Anti-Counterfeit Authority issued an announcement that the deadline to commence recordals for imports in Kenya has been extended from 1 July 2022 to 1 January 2023.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
Kenya Full text
 
 
 
 
 
Madrid Protocol fees revised for San Marino
 
Under the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization on 22 June 2022 notified revised individual fees applicable when San Marino is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 27 Jun 2022
 
San Marino Full text
 
 
 
 

Cases

 
Patent (14)
 
 
EPO: Swiss Reinsurance Company Ltd., European Patent Office (EPO), Board of Appeal, T 0288/19, 17 February 2022
 
The business person sets the framework of the problem to be solved by their business model (insurance conditions) and thus reduces - by setting specific boundary conditions - the degrees of freedom of the skilled computer specialist. The technically skilled person, who has to solve the objective technical problem of implementation, therefore has no latitude in selecting the corresponding (physical) parameters.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
EPO: Schott AG vs. Saint-Gobain Glass France and Etex Building Performance GmbH, European Patent Office (EPO), Board of Appeal, T 1641/18, 31 January 2022
 
While a person skilled in the art would generally not combine documents if this would lead to a deletion of an essential function of the invention in the closest prior art, this usually does not apply to combinations in which an essential feature is replaced by an alternative feature fulfilling the same function.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
EPO: Wolfspeed, Inc., European Patent Office (EPO), Board of Appeal, T 1869/18, 31 March 2022
 
While objections raised by the Board for the first time in a communication under Article 15(1) RPBA 2020 may be considered to give rise to exceptional circumstances within the meaning of Article 13(2) RPBA 2020, and may possibly justify the filing of amendments which specifically respond to the new objections, this does not open the door to additional amendments which are unrelated to the new objections, and for which no exceptional circumstances exist.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
EPO: Koninklijke Philips N.V. vs. RauSearch Laboratories AB, European Patent Office (EPO), Board of Appeal, T 0960/15, 22 December 2021
 
The EPO Boards of Appeal may review discretionary decisions. There are, however, limits on the extent of review that reflect the discretion accorded to the deciding body. In the present case, the board stated that it could only override the decision of the opposition division to admit D8 into the procedure if it had applied the wrong principles or exercised its discetion in an unreasonable way. The board did not find the admittance of D8 unreasonable, because D8 was considered relevant (at least for the novelty of one of the requests on file), which could be established by reading some parts of the extensive document (Article 12(2) RPBA 2020).
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
EPO: Grabovoi, G.P., European Patent Office (EPO), Board of Appeal, J 0014/21, 13 April 2022
 
In proceedings relating to the timeliness of a request for restoration of right of priority, the (legal) board of appeal clarified a number of issues. First, it confirmed that the PCT Assembly may be considered the legislator for the PCT Regulations and that "understandings" of the PCT Assembly expressed in relation to a newly amended rule, together with the adoption of this rule, are an expression of the legislator's intention. The delegates of the PCT Contracting States in the PCT Assembly agreed, in the "understandings" relating to R. 49ter.2(b)(i) PCT, on how this rule should be applied. As an act of authentic interpretation by the legislator this agreement may be taken into account when assessing the context for the purpose of interpreting the new provision

In the case in hand, when applying R. 49ter.2(b)(i) PCT in the light of the understandings of the PCT Assembly, the request and the payment for restoration of the right of priority were made in time.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
EPO: Wai-Lin, M., European Patent Office (EPO), Board of Appeal, T 1362/19, 31 March 2022
 
If an abstract feature is not defined in more concrete terms either in the relevant claim or in the description of the application, it has to be understood in a broad sense. This may be important when assessing the implicit disclosure of a document of the state of the art. In particular, for this assessment it may be irrelevant whether there are several alternatives for implementing the abstract feature in concrete terms.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
Germany: Kältemittelverdichter, Federal Court of Justice of Germany, X ZR 90/19, 21 September 2021
 
If a prior art document describes a specific use case only as a starting point to look for a feasible way to solve a specific problem, certain differences resulting from this use case do not necessarily prevent the skilled person from combining this embodiment with other solutions.
 
Author(s): Dr. Helge Paetzold, Hoffmann Eitle; Mr. Sebastian Rennebaum, Hoffmann Eitle
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Germany; Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Netherlands: Novartis AG vs. Mylan B.V., Provisions Judge of the District Court of The Hague, C/09/625743 / KG ZA 22-195, 22 March 2022
 
The provisions of Art. 72 of the Dutch patent Act (and Art. 67 EPC) protect the patent applicant against competition on the market. What happens if a competitor knowingly enters the market was tested in the present case by Novartis, which sued Mylan for its actions with regard to the marketing of fingolimod. It appears that the patent law is indeed a lex specialis.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: Telefonaktiebolaget LM Ericsson vs. Apple Inc., Provisions Judge of the District Court of The Hague, C/09/618542 / KG ZA 21-914, 16 December 2021
 
Can a party that is planning to sue a competitor for infringement ask the Dutch court to prevent this competitor from starting an anti-suit injunction? This question was raised by Ericsson and Apple and answered by the Dutch provisions judge, although such an anti-anti-suit injunction would be limited and available only if there is a serious threat.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Spain: Judgment no. 46/2022 of the Supreme Court, dated 27 January 2022, Supreme Court of Spain, First Civil Law Chamber, 46/2022, 27 January 2022
 
The Spanish Supreme Court rules in a patent ownership and trade secret dispute where a company had filed a patent application which named as inventor the husband of the company's founder, who had previously led an R&D project funded by a competitor. The Court sets a high standard for ownership claims and, at the same time, establishes a narrow and ambiguous threshold for unfair competition actions based on breach of trade secrets.
 
Author(s): Adrian Crespo, Clifford Chance, Barcelona
 
Source: Kluwer Patent Cases Date: 27 Jun 2022
 
Reporter for: Spain
 
Spain Full text Full text as PDF
 
 
 
 
 
USA: SynQor, Inc. v. Vicor Corp., United States Court of Appeals, Federal Circuit, No. 20-1259, 17 June 2022
 
Obviousness determinations made by the Patent Trial and Appeal Board (PTAB) were vacated because the patent at issue expired during the pendency of the litigation and before the Board issued its final decision.

A PTAB decision that was rendered moot by the “vagaries of circumstance” prior to judgment being entered should have been vacated, the U.S. Court of Appeals for the Federal Circuit has held. The patent at issue expired between the Federal Circuit’s remand to the Board and the Board issuing its final decision after remand (SynQor, Inc. v. Vicor Corp., June 17, 2022, Chen, R.).
 
Author(s): Kevin M. Finson, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 27 Jun 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: University of Massachusetts v. L’Oréal S.A., United States Court of Appeals, Federal Circuit, No 21-1969, 13 June 2022
 
The district court erred in its claim construction analysis and denying UMass jurisdictional discovery.

In an infringement case brought by the University of Massachusetts against cosmetics company L’Oréal involving skin treatment patents, the U.S. Court of Appeals for the Federal Circuit has held that the federal district court in Delaware erred in its claim construction analysis and in denying jurisdictional discovery. The district court’s claim construction error required reversal of its holding that the patents are invalid based on indefiniteness. The Federal Circuit also found that the University of Massachusetts is entitled to jurisdictional discovery and that the district court incorrectly dismissed L’Oréal S.A., based in France, for lack of personal jurisdiction (University of Massachusetts v. L’Oréal S.A., June 13, 2022, Taranto, R.).
 
Author(s): Brian Craig, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 27 Jun 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Baker v. Raimondo, United States Court of Appeals, Federal Circuit, Nos. 2021-1961 & 2021-2116, 13 June 2022
 
Federal district courts were without subject matter jurisdiction to review an inventor’s multitude of complaints about the patent process because the inventor failed to exhaust his administrative remedies.

The federal district court in Alexandria, Virginia, properly found that an inventor’s failure to exhaust administrative remedies was fatal to judicial review of adverse decisions by the USPTO regarding four patent applications, the U.S. Court of Appeals for the Federal Circuit has held. The inventor had not obtained final judgments from the Patent and Trial Appeal Board before filing suit against the Secretary of Commerce and others to alter the USPTO’s patent determinations (Baker v. Raimondo, June 13, 2022, per curiam).
 
Author(s): Kevin M. Finson, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 27 Jun 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Novartis Pharmaceuticals Corporation. v. Accord Healthcare, Inc., United States Court of Appeals, Federal Circuit, No. 2021-1070, 21 June 2022
 
Because the patent failed to disclose the absence of a loading dose, the no-loading-dose limitation was without adequate written description support.

A divided Federal Circuit panel has reconsidered and reversed a prior decision finding that a patent owned by Novatis for administering a drug to treat relapse multiple sclerosis was not invalid for lack of written description support. Upon reconsideration of expert testimony and the prosecution history, the panel concluded that the district court’s finding that the no-loading-dose limitation met the written description requirement was clearly erroneous. The court granted a petition for rehearing filed by HEC Pharm Co., Ltd. and HEC Pharm USA Inc., vacated its prior decision, and reversed the district court’s judgment that the claims of patent at issue were not invalid (Novartis Pharmaceuticals Corporation. v. Accord Healthcare, Inc., June 21, 2022, Moore, K.).
 
Author(s): Cheryl Beise, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 27 Jun 2022
 
United States of America Full text Full text as PDF
 
 
 
 
 
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