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Martin Köhler rokh-ip

Juve "Law Firm of the Year" for Patent law 2005/2006. Invalidating European Patents AIPLA Midwinter Meeting, New Orleans IP Practice in Japan Committee January 23-24, 2007. Martin Köhler www.rokh-ip.com. Invalidating European patents - a bifurcated system.

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Martin Köhler rokh-ip

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  1. Juve "Law Firm of the Year" for Patent law 2005/2006 Invalidating European PatentsAIPLA Midwinter Meeting, New Orleans IP Practice in Japan CommitteeJanuary 23-24, 2007 Martin Köhler www.rokh-ip.com

  2. Invalidating European patents - a bifurcated system A. European opposition proceedings B. National nullity actions C. Which type of action suits you best? www.rokh-ip.com

  3. A. European opposition proceedings • Who decides? • Who can act? • Any interested person within the opposition period of 9 months after grant of the patent • Defendant in infringement proceedings can join pending opposition as co-plaintiff after opposition period has lapsed • How long does it take? • Minimum 2-3 years at opposition division; 2-3 years at Boards of Appeal EPO Boards of Appeal 2 technical + 1 legal member l EPO OppositionDivision 3 technical examiners www.rokh-ip.com

  4. A. European Opposition Proceedings • Grounds for revocation • Opposition can be based only on grounds for revocation specifically defined in Art. 100 EPC • Lack of patentability • Insufficiency of disclosure • Inadmissible Extension • No revocation based on lack of ownership (unlawful deprivation) or violation of procedural rules and requirements during prosecution www.rokh-ip.com

  5. A. European Opposition Proceedings • Amendment of claims during opposition • Art. 102 EPC allows maintenance of a patent in amended form if patentee defends patent in amended form • Amendment admissible if • no inadmissible extension of the claimed subject matter • Claim can be restricted by adding elements from sub-claims, description or drawings, as long as such element is disclosed as belonging to the invention • amendment does not lead to a different invention • Defense of the patent in amended form allowable as a main or an auxiliary request www.rokh-ip.com

  6. A. European Opposition Proceedings • Effect of revocation • Revocation of the patent (in total or in amended form) for all designated EPC states • Revocation ex tunc: no rights for the past and no damages for use of published application as far as revoked • Partial revocation/maintenance in amended form: • Patentee entitled to collect damages back from the moment of publication of the original application, not only from the moment of publication of the amended version of the patent www.rokh-ip.com

  7. National nullity actions(Germany) • Who decides? • Who can act? • Any interested person at any time, even after the patent has expired • How long does it take? • Minimum 1,5 years at Federal Patent Court; 2-3 years at Federal Court of Justice • Usually Court appointed expert involved at Federal Court of Justice Federal Court of Justice 5 legal, no technical judges l Federal Patent Court 2 legal + 3 technical judges www.rokh-ip.com

  8. National nullity actions(Germany) • Grounds for invalidation • Nullity action can be based only on grounds for invalidation under Sect. 21, 22 Patent Act: • Lack of patentability • Insufficiency of disclosure • Unlawful deprivation • Inadmissible extension (during prosecution or opposition) www.rokh-ip.com

  9. National nullity actions(Germany) • Patentee can defend patent in amended form by adding features from • sub-claims • description • drawings • Defense in amended form admissible as main request or as auxiliary request • Limit: • added feature must be disclosed as being part of the invention • no broadening of the scope of the patent www.rokh-ip.com

  10. National nullity actions(Germany) • Effect of revocation • Revocation of the European patent (in total or in amended form) only in the country where nullity proceedings have been filed, no impact on validity and enforceability of other national parts of the European patent • Revocation ex tunc: no rights for the past as far as patent is revoked • Partial revocation/maintenance in amended form: • Patentee entitled to collect damages back from the moment of publication of the original application, not only from the moment of publication of the amended version of the patent www.rokh-ip.com

  11. C. Which type of action suits you best? • choice between national route and European action possible as long as European action is not yet pending • no opposition after opposition period has lapsed • time and cost efficiency of national action vs. limited territorial scope of invalidation • differences in substantive law (inventive step test) www.rokh-ip.com

  12. Thank You! martin.koehler@rokh-ip.com www.rokh-ip.com

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