*** BREAKING *** Be prepared for patent term adjustments, to compensate for delays during prosecution

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Case No. O2020_08/15 | Main hearing of 1 April 2021

The main hearing in this matter earlier today was highly interesting.

The ACME catalog
Acme Corp.

In brief, Acme Corp. asserts infringement of a European patent by Globex Corp. The tricky thing is that the patent had already been cancelled from the register at the end of its 20y term more than two years(!) before the alleged infringement took place.

Globex Corp.

Globex Corp. essentially contends that the complaint is simply an impertinence. What no longer exists cannot be infringed. Hank Scorpio, the CEO of Globex Corp., shouted out:

Where would we be?

But it appears to be not that easy. Acme Corp. essentially argued that it has been cheated out of several years of patent term because the patent was granted only more than 15 years(!) after the filing date. In Acme’s view, this demands for a term adjustment to compensate for the delay during prosecution through no fault of their own. Such term adjustments are granted ex officio in the U.S., and Acme argued that this was only fair.

We want this!

During a break, I had a quick chat with a person who prefers to not see his name on this Blog but who is knowledgeable of the current status of the draft of the forthcoming revision of the Swiss Patent Act; see this Blog here for further information on the draft bill. It appears that some wished for U.S.-style patent term adjustments (similar to 35 U.S.C. 154) during public consultation, which will indeed be included in the final draft of the revised Swiss Patent Act. Accordingly, I understand that we may see patents valid in Switzerland with terms reaching months, if not years beyond the 20y term. This is unprecedented in Europe, to the best of my knowledge!

Stay tuned for further details to be published soon. It may well be that the transitional provisions of the revised PatA turn out to be decisive for the case at hand. And others. Yours, maybe?

Reported by Martin WILMING

April Fool! 😂


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3 Replies to “*** BREAKING *** Be prepared for patent term adjustments, to compensate for delays during prosecution”

  1. This will certainly turn into a leading case. I was not able to follow the hearing because it was the first ever pleaded in Rhaeto-Romanic. What I find particularly interesting is that the court invited the public to submit amicus curiae briefs. What was the deadline?

  2. Honestly, this looks to me as superfluous as the other pending draft bill of the new PatA. This is just another bureaucratic monster…

  3. When looking at Art 63 EPC I wonder how the envisaged extension of term would be compatible with the EPO as it stands.

    There are only two possibility to extend the term of a patent by a contracting state.
    1) Art 63(2,a) in order to take account of a state of war or similar emergency conditions affecting that State; some people might consider that it is a battle to have to deal with an ED and a BA, but it is not really convincing.
    2) Art 63(2,b) which can be summed up in case of a SPC.

    I fear that, should such a bill be enacted in one contracting state, it might push the EPO management to further increase the production pressure on examiners and on the BA.

    The quality is already not rosy at present, at least in first instance, but then you could forget it completely, and it would indeed end up at the same level as that of the USPTO.

    Asterix’s favourite statement is “these Romans are crazy”.
    It should then be completed by “these Swiss are crazy”.

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