EPO Enlarged Board of Appeal Finds the Cure For Poisonous Divisionals

Author: Leythem Wall
Editor: Adriana L. Burgy

At the end of 2012, a European Patent Office (EPO) Board of Appeal decision sent shockwaves through Europe; it concluded that a European divisional patent publication could be novelty destroying to the European parent patent from which it is derived, the so called “poisonous divisional.”

The reasoning behind the “poisonous divisional” is that the parent claims are not entitled to priority, whereas the anticipatory subject matter in the divisional publication is entitled to priority. In fact, the problem works both ways, i.e., the publication of the parent could also be novelty destroying against a divisional application whose claims are not entitled to priority. Continue reading

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The Israel Patent Office (ILPO) will now classify its newly filed Israel national stage patent documents into the CPC thereby expanding CPC’s coverage of patent documents throughout the world and enabling Israel documents to be searched alongside other countries.

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information

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Britain to Ratify the UPC Agreement?

Author: Hazel Ford
Editor: Adriana L. Burgy

In a move that has surprised many, the UK government has announced that it is pressing ahead with its preparations to ratify the Unified Patent Court Agreement (UPCA).

The UPCA is an agreement between most of the European Union member states to establish a single patent right covering those member states (the Unitary Patent, UP), and a new, centralized court (the Unified Patent Court, UPC) ,which will eventually have sole jurisdiction to decide on disputes arising from both Unitary Patents and European patents in those member states.  One of the branches of the Central Division of the UPC is to be located in London, handling most cases relating to the validity of patents in the life sciences and chemistry areas.  Continue reading

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The PCT Time Limit Calculator assists applicants in the computing of essential PCT Time Limits; available by clicking here.

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information

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Prosecution History Estoppel & Unelected Designs

Author: Elizabeth D. Ferrill
Editor: Adriana L. Burgy

District Court Decision:  Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Case No. 16-3061 (C.D. Cal. Nov. 3, 2016).

Background

In 2014, the Federal Circuit recognized that prosecution history estoppel applies to design patents, specifically in the context of amendments made in response to a restriction requirement. Pacific Coast Marine Windshields Ltd. v. Malibu Boats, 739 F.3d 694 (Fed. Cir. 2014).  In Pacific Coast, the Federal Circuit held that cancelling an embodiment in a design patent application in response to a restriction requirement is a surrender of the cancelled subject matter and that such a surrender is made in order to secure the patent.  But Pacific Coast did not address the exact scope of the surrender, noting that it would be based on what design was elected, what design was not, and the circumstances of the case.   Continue reading

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