Case No. S2022_002 | Order of 2 June 2022
Patent prosecution takes time. So do infringement proceedings. But can the two overlap when time is of the essence? Clearly, a patent has to be granted at the time when an injunction is issued. But when is the earliest you can initiate infringement proceedings?
For main proceedings, various scholars had already held that infringement proceedings can be initiated before grant of the patent; at least when the claims are fixed.
But what about PI proceedings?
In S2021_007, PI proceedings had been initiated when all formalities at the EPO had already been completed and the publication of the mention of the grant was already scheduled; Art. 97(3) EPC. Shortly before the scheduled publication of the grant, a third party lodged an assignment action at the FPC; PI proceedings were not dismissed but stayed pending conclusion of the assignment proceedings.
A recent procedural order in S2022_002 completes the picture; the metes and bounds of quick-starting PI proceedings are getting more and more clear. In that case, the plaintiff / not-yet-patentee had succeeded in appeal proceedings at the EPO; a BoA remitted the case to the ED with the order to grant a patent with a specific claim set, and a description to be adapted thereto. The ED had not picked up the file again, i.e. not even a communication under R. 71(3) EPC had been issued, when the PI proceedings were initiated.
The order holds that the claims are fixed by way of the order of the BoA; cf. Guidelines E-XII, 9.2 and T113/92, hn.
Further, the grant of the patent can be expected earlier than a decision in the present PI proceedings (contrary to S2021_007 with the cumbersome assignment action as a road blocker). In the unexpected event that PI proceedings were ripe for decision before the patent is granted, the judgment would be suspended.
Accordingly, PI proceedings are continued.
/MW
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BIBLIOGRAPHY
Case No. S2022_002 | Order of 2 June 2022
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Single Judge:
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- Dr. Mark SCHWEIZER
Court Clerk:
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- Sven BUCHER
Representative(s) of Plaintiff:
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- n/a
Representative(s) of Defendant:
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- n/a
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ORDER
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