The EPO Ten-Day Notification Rule is Abolished: Practical Examples 

In view of the ongoing digital transformation in the patent grant procedure at the European Patent Office (EPO), the European Patent Convention (EPC) rules concerning the presentation requirements of documents submitted in proceedings before the EPO have been amended. These EPC amendments, which will enter into force on 1 November 2023, include the deletion of the so-called “ten-day notification rule” and the introduction of a new notification rule less favorable to users of the EPC system. The calculation of periods in proceedings before the EPO is impacted accordingly. Importantly, users of the EPC system cannot rely any longer on an automatic 10-day extension of deadlines, which was originally conceived to compensate for postal service delays.

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There are two scenarios where a patent term may run longer than 20 years from the date on which a U.S. patent application is filed or from the date on which the earliest U.S. application is filed if the application is filed with reference to 35 U.S.C. §§ 120, 121, 365(c), or 386(c).  The first is denoted Patent Term Adjustment (PTA), which is granted due to examination delays by the USPTO during the prosecution of a patent application.  The second is Patent Term Extension (PTE), which accounts for delays in commercializing an invention due to regulatory approval required for the invention.  Distinctions between and the statutory language creating PTA and PTE was the subject of the recent decision in In re Cellect by the Court of Appeals for the Federal Circuit (CAFC or Federal Circuit).

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After recently reminding that in order for commercial success of an invention to support non-obviousness, the required nexus cannot rest solely on a claim element that is known in the prior art, the U.S. Court of Appeals for the Federal Circuit has further reminded patent owners and applicants that nexus may be established upon consideration of the claimed combination as a whole, even if individual elements of the claim are found in the prior art.

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Federal Circuit Strengthens “Field of Endeavor” Prong of the Non-Analogous Art Test

Photo Credit: Thibault Penin

The Court of Appeals for the Federal Circuit recently revisited an important issue directed to the relevance of prior art references combined in an obviousness rejection, specifically with respect to the analogous art doctrine. In Netflix, Inc. v. DivX, LLC, the Patent Trial and Appeal Board had ruled for the patentee DivX, holding that a secondary prior art reference was not analogous art. On appeal, the Federal Circuit clarified the strict requirements of the two-prong test for non-analogous art.

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Jury Awards $12.8 Million to WOW Tech in IP Dispute

In a five-day trial in the United States District Court for the District of Delaware, the WOW Tech group, a subset of companies within the Lovehoney Group – IntiHealth Ger GmbH, WOW Tech Canada, Ltd., WOW Tech USA, Ltd., and Novoluto GmbH – defeated antitrust and unfair competition claims brought by EIS, Inc., and prevailed with counterclaims of patent infringement and willful infringement. READ MORE

We are pleased to announce that effective October 1st, 2023, our Paris office has officially changed its name from Osha Liang to Osha BWB. This completes the name change process which began a year ago for the firm.

The Paris office works in close collaboration with the firm’s other seven global offices, providing efficient, seamless support for our clients. Our European practice is comprehensive, with a particular focus on patent drafting and prosecution, post-grant (opposition) and appeal proceedings, IP due diligence, pan-European and French litigation support and strategy, patent education seminars and counseling to assist in the implementation of in-house IP strategies. Our Paris office legal staff includes patent attorneys qualified before the EPO, the French patent office (INPI) and the Unified Patent Court (UPC).

OBWB has several delegates attending AIPPI's 2023 World Congress. We look forward to seeing fellow participants in Istanbul. Request a meeting here.