Search Results for: Francesca Giovannini


24

Mar 2020

Impact of COVID-19 (novel coronavirus) Pandemic on EPO Operations

By Francesca Giovannini 繁體中文 Due to the COVID-19 pandemic, the European Patent Office (EPO) has announced measures to safeguard applicants’ rights and opposition and appeal parties’ rights. Among the announced measures, the EPO communicated that all “time limits” before the EPO expiring on or after 15 March 2020 are extended until 17 April 2020. If the disruption should continue after 17 April 2020, any further…

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20

Mar 2020

Unified Patent Court and European Patents with Unitary Effect: the German Federal Constitutional Court, more than Brexit, creates a stalemate situation

By Francesca Giovannini 繁體中文 The German Federal Constitutional Court (Bundesverfassungsgericht) issued the long-awaited decision on the complaint filed against the Unified Patent Court (UPC) bills for infringement of the German Constitution. According to the decision, the Act of approval to the agreement on the UPC to confer sovereign powers on the UPC is void. The main reason underlying the decision resides in the fact that…

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28

Feb 2020

Outbreak of Coronavirus: Impact on proceedings before the European Patent Office and the EPC member states

By Francesca Giovannini 繁體中文 As of today, February 28, no specific information relating to the worldwide outbreak of the Coronavirus has been issued by the European Patent Office (EPO). Nevertheless and because of this, while expressing solidarity with all people involved and wishing all our readers health, we would like to remind applicants, proprietors and opponents of European patents that some law provisions on time…

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08

Nov 2019

New Rules of Procedure of the Boards of Appeal of the European Patent Office

By Francesca Giovannini 繁體中文 The New Rules of Procedure of the Boards of Appeal (RPBA) of the European Patent Office (EPO), which will enter into force on January 1, 2020, will apply to all pending appeals – with a few exceptions – and to all new appeals filed after that day.  Among the exceptions, the new provisions relating to the admissibility of amendments of a…

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01

May 2019

Update on French Intellectual Property Law: French Parliament Passes “Action Plan for Business Growth and Transformation”

By Francesca Giovannini and Bertrand Clair On April 11, 2019, the French parliament passed a new bill titled “Action Plan for Business Growth and Transformation” (hereinafter “PACTE bill” based on French title of the legislation), which includes new legislative provisions affecting French intellectual property (IP) rights. Provisions of the PACTE bill are expected to enter into force on April 26, 2019 at the latest, and…

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01

Oct 2018

New French Provisions Impacting National Intellectual Property Rights

By: Francesca Giovannini New legislative provisions affecting French intellectual property (IP) rights are under discussion.  In particular, these provisions are contained in a proposed law known as “Action Plan for Business Growth and Transformation” (in French: PACTE) currently examined by the parliament and in a decree the government intends to issue shortly.  Once the bill is finalized and passed and the decree is issued, the…

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29

Jun 2018

The Significance of “Could” vs. “Would” When Assessing Obviousness Rejections

By: Zachary Schaefer, Francesca Giovannini, Han-Mei Tso, and Mutsumi Fukuoka USPTO PERSPECTIVE United States patent law does not allow the patenting of an invention if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the…

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31

May 2018

The UK ratified the UPC Agreement: One Step Closer to the Completion of the Ratification Process for the UPC to Operate

By: Francesca Giovannini On April 26, 2018, the United Kingdom (UK) ratified the Unified Patent Court (UPC) Agreement, confirming that the declared intention to ratify the Agreement was genuine and sincere despite all uncertainties about the retaining role of the Court of Justice of the European Union (EU), to which, according to the Agreement, questions can be submitted regarding the interpretation of EU law. Indeed,…

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30

Mar 2018

EPO objections of added subject-matter due to an Unallowable Intermediate Generalization

By: Francesca Giovannini, Yann Gloaguen, Elsa Benveniste According to Art. 123(2) EPC, a European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. The idea underlying Art. 123(2) EPC is that an Applicant should not be allowed to improve their position by adding subject-matter not disclosed in the application as…

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30

Jan 2018

New Decision from EPO Enlarged Board of Appeal G1/16 Regarding Disclaimers

By: Francesca Giovannini A disclaimer is a “negative” feature, i.e., a feature describing elements and characteristics that the claimed subject-matter does not have. An amendment based on a disclaimer, as any amendment made to a European patent application or patent, has to comply with the requirements of Art. 123(2) EPC (added subject-matter). For example, when a claim referencing a composition which comprises a metal element…

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02

Dec 2017

Applicants May Save Money By Paying Fees to the EPO By Credit Card

By: Francesca Giovannini As a part of its ongoing drive to fully digitize all patent processes, the European Patent Office (EPO) has decided to no longer accept written instructions for payment of patent fees starting December 1, 2017. Debit orders are now accepted and only processed electronically using Online Filing (EPOLINE), new online filing (CMS), Online Fee Payment, or ePCT. The payment option via bank transfers remains unaffected.  More notably, the EPO has newly introduced a web-based method of payment by credit card. Users of the new…

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27

Oct 2017

New EU Practice Regarding Summons to Attend Oral Proceedings as First Action in Examination

By: Francesca Giovannini Whenever objections are raised in the search opinion accompanying the European search report, the applicant of a European patent application must respond to the search opinion by filing amendments to the description, claims or drawings, and/or filing observations on the objections. In the absence of objections in the search opinion, amendments to the description, claims or drawings, and/or observations may be voluntarily…

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29

Sep 2017

European Litigation Series, Part II: Search Order and Seizure in Italy

By: Francesca Giovannini Italy is the Eurozone’s third-largest economy after Germany and France and, due to the size of its market and reduced litigation costs, should be taken into consideration when Intellectual Property (IP) rights need to be enforced in Europe. Since exclusive jurisdiction over IP cases has been conferred on select Italian courts, the duration of patent litigation proceedings has been shortened: a first-instance…

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15

Jun 2017

UPC Update (June 2017)

By: Francesca Giovannini As mentioned in Osha Liang’s previous newsletters, the ratification process of the Unified Patent Court (UPC) Agreement has not been completed yet because two of the mandatory participating states—namely the UK and Germany—have yet to conclude their ratification process for the UPC to operate. In addition to the uncertainties generated by the Brexit vote, further doubts have been cast upon imminent operation…

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30

May 2017

Litigation Before The Unified Patent Court: What Will It Look Like?

By: Francesca Giovannini As is known, the UK and Germany have still to ratify the Unified Patent Court (UPC) Agreement before it can enter into force. Germany is expected to ratify after the UK has completed the ratification process. If the UK’s intention to ratify the UPC Agreement declared last November is maintained, the UK could ratify it after the elections called for June 8, presumably…

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25

Apr 2017

UPC: Factors to be Considered in Making the Decision of Opting Out

By: Francesca Giovannini Despite the ongoing uncertainties in the ratification process of the Unified Patent Court (UPC) Agreement, the so called “sunrise period” giving the possibility of opting out of European patents/applications from the exclusive jurisdiction of the UPC before the UPC becomes operational could nevertheless start soon, i.e., in September 2017 at the earliest. In addition to the uncertainties generated by the Brexit vote,…

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31

Mar 2017

UPC: Confirmation that Opting Out is Planned to Start Sept. 2017

By: Francesca Giovannini The Unified Patent Court (UPC) Preparatory Committee met in The Hague on 15 March 2017 and confirmed that, as previously announced, opting out European patents and applications before the UPC becomes operational is scheduled to begin in September 2017. The UPC Preparatory Committee also confirmed that the planned entry into force of the UPC Agreement and operation of the Unified Patent Court…

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27

Feb 2017

Petty Patents Around the World

By: Francesca Giovannini, Shinya Kimura, Han-Mei Tso and Jude Yi Utility models are intellectual property (IP) rights also known in some countries as utility innovations, utility certificates, short-term patents or petty patents. Independently from the specific wording used, a utility model is an exclusive IP right granted in some countries for a technical innovation, generally relating to a product or a device, for a limited period…

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25

Feb 2017

New Validation Agreement Between European Patent Organisation and Cambodia

By: Francesca Giovannini After the validation agreements signed with Morocco, the Republic of Moldova and Tunisia, on January 23, 2017 the European Patent Organisation, the intergovernmental organisation of which the European Patent Office (EPO) is the executive body, has signed its fourth validation agreement with a non-member state, Cambodia. This is the first validation agreement recognising European patents on the territory of an Asian country. According…

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30

Jan 2017

UPC: Opting Out Might Be Possible Starting From September 2017

By: Francesca Giovannini Following the UK’s decision to leave the European Union (EU) and months of uncertainty concerning what measures the UK government would take to implement that decision, the IP community was generally quite surprised by the announcement made by the UK Minister for IP at the EU Competitiveness Council in Brussels last November. On that occasion, the Minister announced that the Agreement on…

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30

Jan 2017

Validation of English Language European Patents in Belgium: Translation of Specification No Longer Required

By: Francesca Giovannini Until recently, in order to validate a granted, English language European patent in Belgium, it has been necessary to file a translation of the specification in French, Dutch, or German.  In anticipation of accession of Belgium to the London Agreement, Belgium has revised its patent legislation with effect from January 1, 2017, to remove this requirement. Under the revised patent legislation, proprietors…

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27

Oct 2016

European Litigation Series – Part 1: French Seizure of Evidence (saisie-contrefaçon)

By: Francesca Giovannini The most effective tool offered by the French IP litigation system to gather evidence of infringement of an IP right in force in France is the possibility of lodging a petition for search and seizure of evidence (saisie-contrefaçon). This procedure is extensively used before patent infringement actions and is authorized by the Presiding Judge of the Paris Court (Tribunal de Grande Instance, TGI)…

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27

Oct 2016

Brexit: An Update on Planned Legislative Reforms Affecting IP Rights

By: Francesca Giovannini British Prime Minister Theresa May stated on October 2, 2016 that the notification under Article 50 of the Lisbon Treaty, the formal mechanism for leaving the European Union (EU), will be sent by the end of March 2017 and announced a so-called Great Repeal Bill repealing the 1972 European Communities Act giving direct effect to all EU law. The Great Repeal Bill will…

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29

Sep 2016

Reform of the EPO Boards of Appeal and Potential Impacts on Applicants

By: Francesca Giovannini At the meeting of the Administrative Council last June, the European Patent Office (EPO)’s Member States adopted a proposal from the Office for reform of the Boards of Appeal. As a consequence, the reform came into effect on July 1, 2016. One of the declared aims of the reform is that of decreasing the backlog of cases, thus ensuring a timely delivery…

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29

Sep 2016

AIPPI 2016 World Congress takes place in Milan, Italy

By: Jonathan Osha, Peter Schechter, and Francesca Giovannini The AIPPI 2016 World Congress took place last week in Milan, Italy.  More than 2000 IP professionals from around the world were in attendance.  Osha Liang’s Jonathan Osha, Peter Schechter, and Francesca Giovannini provide this report on the event. The Congress commenced on Saturday with Study Committee Meetings on IP harmonization topics in Patents, Designs, Copyright, and Security…

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23

Aug 2016

Kuwait has joined the Patent Cooperation Treaty

By: Francesca Giovannini Kuwait has joined the Patent Cooperation Treaty (PCT) by depositing its Instrument of Accession to the PCT on 9 June 2016, thus becoming the 149th Contracting State of the PCT. Since the PCT will officially come into effect in Kuwait on 9 September 2016, a first consequence is that any PCT application filed on or after 9 September 2016 will automatically include the…

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25

Jul 2016

Opposition Proceedings Before the European Patent Office: A New, Streamlined Procedure

By: Francesca Giovannini The European Patent Office (EPO) has revised the workflow of opposition proceedings with the general aim of providing early certainty from opposition. More particularly, the goal of the revised workflow, which came into effect on July 1, 2016, is to reduce the total time needed for a first-instance decision in “straightforward cases” to 15 months starting from expiry of the nine month opposition period. According…

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