When the EPO’s Enlarged Board of Appeal issued its decision in G 2/21 (the “plausibility” referral) earlier this year, many were left wondering what the requirements were for a patent applicant/proprietor to be able to rely on post-filed evidence in support of inventive step. The referring board in the case underpinning the referral (T 116/18) has recently issued a decision setting out its interpretation of G 2/21 in detail, offering new insight into how the EPO is likely to apply this important decision in the future.
The EPO Examining Division are Criticized by the Boards of Appeal for Breaking the Rules of Procedure
The Board have remitted this recently refused case to the Examining Division who have been criticized for committing several substantial procedural violations, including depriving an applicant of their all-important right to oral proceedings.
Notwithstanding the doctrine of equivalents now used to interpret claim scope, the principle of purposive construction is still used to interpret specific terms in a patent claim. In this case this yielded the result that “bigger” could be the same as “not bigger”.
One of the first preliminary injunctions was issued by the Unified Patent Court on 22 June 2023. The decision was made ex parte and, remarkably, on the same day as the application for an injunction was filed by the proprietor, despite the respondent’s efforts to avoid the issue of an injunction by filing a protective letter.
EPO Enlarged Board of Appeal set to consider in G 1/23 the degree to which enablement impacts the status of a commercially available product as state of the art
Central to the assessment of patentability at the EPO is the definition of ‘state of the art’. Article 54(2) EPC defines the state of the art as ‘everything made available to the public’ before the effective filing date of a patent application. But when the thing made available to the public is a product with a defined chemical composition, how much of that composition is made available to the public by the simple disclosure of the product? G 1/92 provided an answer but as the current referral to the EPO’s EBA shows, there are gaps that need filing.
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.
The Legal Board of Appeal has confirmed that an AI system cannot be the inventor of a patent application at the EPO, agreeing with the decision of the Receiving Section (reported by us in our article of February 2020).
Background Dr Thaler filed two UK patent applications and subsequently filed Form 7’s stating that the inventor for both applications was the AI system “DABUS”. Dr Thaler also indicated on the Form 7’s that he had acquired the right to be granted the patents “by ownership of the creativity machine ‘DABUS'”. The UKIPO responded stating […]