Thursday, 14 March 2013

Mission impossible? Following EPO infringement rulings

This week's ruling of the UK's Supreme Court in Schütz v Werit [2013] UKSC 16 has already been noted on this weblog, has attracted a good deal attention on account of its potential impact on the spare parts sector. However, it is not just the substantive ruling that has captured attention.  It's worth taking note of paragraph 38 of the decision in which Lord Neuberger, delivering a speech with which the four other judges agreed, said:
"The House of Lords and this court have emphasised on a number of occasions the desirability of national courts following the established approach to infringement of the Technical Board of Appeal of the European Patent Office (“the EPO”), and the German Bundesgerichtshof (“the BGH”) have taken the same view – see, most recently, Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] 1 All ER 1154, paras 84-87, and Case Xa ZR 130/07".
Bearing in mind the words in bold red type, if you then click through to the EPO's Board of Appeal FAQs, you will find this:

What do the technical boards of appeal and the Legal Board of Appeal do?

The technical boards of appeal and the Legal Board deal with appeals filed in relation to decisions reached by the first instance in the patent grant procedure, that is the Receiving Section and the Examining, Legal and Opposition Divisions.
They decide on questions relating to the granting of and opposition to European patents under the European Patent Convention, but not on questions of patent infringement.
The Legal Board of Appeal deals mainly with appeals by parties adversely affected by decisions of the Receiving Section and the Legal Division.
The technical boards may order that an opposed patent be maintained in its entirety or in part only, or that it be revoked.
PatLit thanks Gary Moss (EIP) for digging up the EPO link for us.

1 comment:

Anonymous said...

I note that the judgment has now been surreptitiously rewritten to correct paras 38 and 39.