News & Analysis as of

Prior Art European Patent Office

Hogan Lovells

ChatGPT is not a proxy for the skilled person

Hogan Lovells on

In a recent decision the Board of Appeal of the European Patent Office (EPO) has for the first time addressed the use of AI to support arguments on claim interpretation, in this case deciding that ChatGPT cannot be used as a...more

A&O Shearman

The UPC’s interpretation of inventive step: does it follow the problem-solution approach?

A&O Shearman on

UPC case law on the assessment of inventive step is still evolving. Most local division (LD) decisions have indicated a slightly diverging practice from the EPO’s problem-solution approach. However, more recently, others have...more

Mintz - Intellectual Property Viewpoints

The UPC and EPO Divide: Understanding Conflicting Revocation Proceeding Outcomes

With nearly 800 cases adjudicated or pending thus far at the Unified Patent Court (UPC), a possible procedural gap has appeared in the European patent system: no clear legal mechanism currently exists to resolve conflicting...more

Jones Day

The EPO Adopts a Patentee-Friendly Approach on Assessing Formal Priority Entitlement

Jones Day on

The Background: There has been a growing trend to invalidate European patents by challenging their formal priority and using intervening prior art. The Technical Boards of Appeal of the European Patent Office ("EPO") referred...more

A&O Shearman

When is the composition of a product on the market prior art?

A&O Shearman on

G1/23 – EPO Enlarged Board of Appeals of the EPO “available” (referral from T 0438/19) - Under which circumstances can the public prior use of a product constitute prior art for novelty or inventive step[s], specifically...more

McDonnell Boehnen Hulbert & Berghoff LLP

News from Abroad: European CVC CRISPR Patent Revoked Because of Invalid Priority Claim

While many patiently await developments in the pending U.S. interference proceedings relating to the CRISPR patents in the U.S., matters are progressing in Europe.  The Opposition Division (OD) of the European Patent Office...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution - September 2019: Post-Filing Experimental Data at the European Patent Office

The Guidelines for Examination in the European Patent Office (EPO) permit the use of post-filing experimental data in a limited manner to support the scope of objected claims. However, reliance on post-filing data differs...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - September 2018: Third Party Observations in Europe, China, Japan, and for the PCT - To File...

Both the European Patent Office (EPO) and the Japanese Patent Office (JPO) accept a third party observation regarding validity of a patent application. In February 2012, it was announced that third party observations could be...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Global Patent Prosecution Newsletter - September 2018

A Survey of Third Party Observation Systems - Third party observations can be a cost-effective way of introducing prior art or arguments related to patentability of a published patent application. The September 2018 issue...more

A&O Shearman

English Court of Appeal rejects the EPO’s “serious contemplation” test for anticipation by prior disclosure overlapping with later...

A&O Shearman on

In the case of Jushi Group v OCV [2018] EWCA Civ 1416, the Court of Appeal has considered the question of the relevant test to apply when assessing whether a prior disclosure of numerical ranges will anticipate a later claim...more

Jones Day

French Cour de Cassation Clarifies Requirement of Plausibility

Jones Day on

The Decision: The French Cour de cassation, in a case concerning a dosage regime patent, recently clarified the "plausibility" requirement, an element of sufficiency of disclosure or inventive step. The Result: The wording...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Patent Grace Period Laws in the IP5 Patent Offices: Some Similarities But Largely Different

Life science and other high technology companies most frequently file patent applications in five IP offices (IP5), namely: the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese...more

Smart & Biggar

Understanding the similarities and differences between priority claims in Canada and the U.S.

Smart & Biggar on

A valid priority claim can allow a patent application to benefit from the filing date of an earlier patent application so as to exclude certain prior art from consideration. The recent decision of the U.S. Federal Circuit in...more

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