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Book – Claims Limitation in Patent Litigation: European Patent: A Variable Geometry Right?

29 Jun 2016

Claims Limitation in Patent Litigation: European Patent: A Variable Geometry Right? Limitations and Amendments of Claims during Litigation, edited by Thorsten Bausch and Mario Franzosi, paperback, June 2016

“When the validity of a patent is challenged, the patentee has really only two options: He can defend the patent against the challenge by submitting sound arguments – or he can try to amend the patent in such a way that the challenge no longer affects the core of the protected invention that he wishes to defend.

While this sounds simple in principle, it leaves a few fundamental questions open, of which the most important is: Exactly which amendments are allowable? If you want to amend your patent, do you have to do this unconditionally or can you do it by way of an auxiliary request? And when can you amend the patent, i.e. up to which point?

Interestingly, despite all efforts for harmonization over the last 40 years and more, the practices of the EPO and the key EPC Member States still differ widely in almost each of these important questions. And Italy has a particular problem in this regard since it has recently introduced a deceptively simple rule that amendments are possible at each stage of patent litigation. This has proven to be quite difficult to transpose to practice, and it seems that even Italy itself is now in need of some harmonization.

Looking ahead, matters may be further confounded by the future UPC system, where, as things stand at the moment, amendments will only be able to be carried out at a very early stage of the proceedings. If this is not done, a patentee will find himself at the mercy of the courts.

In a situation as complex as this, a book written by and for practitioners must certainly come in very handy. And here it is: “Claims Limitation in Patent Litigation”, edited by Prof. Mario Franzosi of the law firm Franzosi Dal Negro Setti and by Dr. Thorsten Bausch of Hoffmann Eitle.

This collection of contributions from Italy, the EPO, Germany, the UK, France, and the Netherlands illuminates what it is practitioners need to know right now about amendments in each of these jurisdictions. The contributions stem from some of Europe’s finest patent judges and most savvy patent practitioners, including Presiding Judge Marina Tavassi from the Tribunale di Milano and LJ Robin Jacob.

Some of the essays summarize the existing case law, while others look ahead and express personal ideas on how certain issues could or should be sensibly addressed. On top of this, the book includes a contribution addressing the famous exemplary case “Cani e lupi” that dealt with a lot of delicate questions (and provided answers) about the allowability of amendments in a specific case.

You may order the book here.