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Read the latest news and briefings from the team at Schlich about real cases involving patents, trade marks and designs.

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EPO to End “10-Day Rule”

The EPO “10-day rule” has for a long time effectively acted as a grace period during which certain responses can be timely filed after the deadline calculated from the face of an official communication only. However, the EPO are abolishing the 10-day rule and for deadlines set after 1 November 2023 this effective extension will not apply. Therefore, it is important that applicants and their representatives, who commonly rely on the grace period offered by the 10-day rule, recognise and remember that this option will not be available to them after 1 November 2023.

April 2023

DECISION IN THE EBA PLAUSIBILITY REFERRAL (G2/21)

In summary, in support of inventive step in a claim in a European patent: yes, post-filed evidence can be used; and yes, it can be used to prove a technical effect. But this is subject to a proviso that the technical effect to be proved can be derived from the application as filed and is directed at the same invention as disclosed in the application as filed.

March 2023

spot the difference game with 2 sharks to compare

Pitfalls of Changing Definitions from a Priority Application

T1303/18 – This case acts as a useful reminder that changing definitions of the invention or important features thereof, between the priority application and subsequent filing, can be dangerous, and care is needed.

March 2023

Free speech prevails in Lite-Netics, LLC v. Nu Tsai Capital LLC, d/b/a Holiday Bright Lights

Lite-Netics, LLC ‘Lite-Netics’ and Nu Tsai Capital LLC, d/b/a Holiday Bright Lights ‘HBL’ sell string lights primarily for use in decorating buildings during the holiday season. Lite-Netics brought an infringement action against HBL before the District Court of Nebraska with respect to two US patents. It also sent notices to some of its customers, also customers of HBL, asserting infringement and its intent to enforce its rights. HBL filed counterclaims, including for state-law torts, and requested a temporary restraining order (TRO) and subsequent preliminary injunction to prevent Lite-Netics making accusations with respect to patent infringement. The District Court granted both the TRO and subsequent preliminary injunction but on appeal the Federal Circuit found that the District Court abused its discretion in issuing the preliminary injunction because the bar to stopping free speech was clearly not met.

March 2023

The UKIPO confirms that an SPC is for the product in the marketing authorisation on which it is based and not further uses for the product

It is well known that a pharmaceutical product can find alternative uses than the application for which it was originally developed. Furthermore, further patents can be granted to additional usage and dosage regimes for such pharmaceutical products. The question considered by the Hearing Officer in this case was whether a marketing authorisation for a single active compound (safinamide) was also sufficient to support a supplementary protection certificate (SPC) application for the use of safinamide in combination with levodopa/PDI for the treatment for Parkinson’s disease.

February 2023

Daybreak at last! The UPC start date is confirmed

The implementation of the Agreement on a Unified Patent Court has been a slow process, with many unexpected hurdles and delays being encountered along the way. However, it seems the Unified Patent Court is now ready to start taking cases, and thus Germany has recently ratified the UPC Agreement, setting into stone 1 June 2023 as the date on which this long-awaited court will finally open for business.

February 2023

Gold Standard for Novelty of Subranges

A recent EPO Board of Appeal decision has dismissed the common test for novelty of a subrange and has instead proposed that the so-called “gold standard” test should be used. Under the gold standard novelty test, a claimed subrange is considered novel simply if there is no direct and unambiguous disclosure of the claimed subrange – regardless of whether the subrange is “sufficiently far removed” from any range in the prior art.

February 2023

Enlarged Board of Appeal grants 10th Petition for Review

Any party to appeal proceedings adversely affected by the decision of the Board of Appeal can file a Petition for Review of the decision by the Enlarged Board of Appeal. However, such petitions may only be filed on the grounds that: (i) the composition of the board was not correct, (ii) a fundamental violation of the right to be heard occurred (iii) a fundamental procedural defect occurred (iv) a criminal act had an impact on the decision. Historically, the success rate of Petitions for Review at the EPO has not been high, falling at around 5%. That said, November saw the granting of the 10th Petition for Review. Read on to get a flavour of what it takes to succeed.

January 2023

Videoconferencing becomes the norm at the EPO

Following the start of the COVID-19 pandemic in March 2020, the EPO quickly adopted videoconferencing as an alternative to holding in-person oral proceedings at the EPO sites in Munich and The Hague. The EPO has been running a pilot project since then to determine whether videoconferencing should continue to be used now that many countries have dropped the restrictions they introduced as a result of the pandemic. Accordingly, the President of the EPO has recently decided that videoconferencing should in future be adopted as the default format for all first instance oral proceedings before the EPO, with in-person oral proceedings only being held if there are “serious reasons” justifying this. For oral proceedings before the Boards of Appeal, the format of the oral proceedings will continue to be decided on a case-by-case basis.

December 2022

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