Jump to content
Deceptive Conducts before the Patent Office / PART I: GENERAL RULES ON THE PATENTING PROCEDURE
Deceptive Conducts before the Patent Office / PART I: GENERAL RULES ON THE PATENTING PROCEDURE
Contents
Chapter
Expand
|
Collapse
Page
1–24
Titelei/Inhaltsverzeichnis
1–24
Details
25–30
Chapter I: Introduction
25–30
Details
1. The Underlying Problem
Details
2. Deceptive Behaviour in Patent Procedures and Available Remedies under Patent Law
Details
3. The Patenting Procedure under the Spotlight of Competition Law. Yet another Angle for the IP v Competition Law Debate
Details
4. Scope and Structure of this Work
Details
31–116
PART I: GENERAL RULES ON THE PATENTING PROCEDURE
31–116
Details
Chapter II: The Procedure before the Patent Office
Details
1. General Framework
Details
2. Synopsis of the Patent Procedure in the USPTO and the EPO
Details
A. Examination Process: an Ex Parte Procedure
Details
B. Filing of a Patent Application. Description, Claims and Priority
Details
I. Description
Details
II. Claims
Details
III. Other Formal Requirements. Inventors and Priority
Details
C. The Application Process
Details
I. Formal and Substantive Examination, Publication and Office Actions
Details
II. Amendments
Details
III. Divisional Applications and Unity of Invention
Details
IV. Grant, Publication and National Validation
Details
V. Third Party Observations
Details
D. Post Grant Procedures
Details
I. Post-Grant Amendments, Ex Parte Reexamination and Supplemental Examination
Details
II. Third Party Intervention after Grant. Oppositions, Post-Grant Reviews and Inter-Partes Reviews
Details
III. SPCs and Term Extensions
Details
a. SPCs in the EU
Details
b. Patent Term Extensions in the US
Details
IV. Patent Linkage and the Orange Book
Details
E. Alternative Procedures. PCT, Patent Prosecution Highway and the Use of Results from other Patent Offices
Details
F. The Role of Patent Agents
Details
Chapter III: The Responsibilities of the Patent Applicants before the Patent Office
Details
1. The Duties of the Patent Applicant under US Law
Details
A. The Origin of the Inequitable Conduct Doctrine. A Stroll down Memory Lane
Details
B. The Development of the Inequitable Conduct Doctrine and the Duty of Candour
Details
C. Standards for Finding Inequitable Conduct
Details
I. Intent
Details
II. Materiality
Details
III. Burden of Proof and the ‘Sliding Scale’
Details
D. Types of Conducts that can be Held Inequitable
Details
I. Failure to Disclose the Prior Public Use of an Invention
Details
II. Failure to Cite Known Relevant Prior Art
Details
III. Submission of False Information
Details
IV. Other conducts
Details
E. Disciplinary and Criminal Sanctions
Details
2. The Duties of the Patent Applicant in Europe
Details
A. Extent of Patent Applicants’ Duties. Is there a Duty of Disclosure under the EPC?
Details
I. Rule 42(1)(b) EPC as a Duty of Disclosure?
Details
II. The Duty of Disclosure in the Travaux Préparatoires
Details
III. Rule 141 EPC and the Limited Duty of Disclosure
Details
IV. The impact of AstraZeneca
Details
B. Legal Consequences of a Deceitful Conduct before the Patent Office
Details
I. Germany
Details
II. United Kingdom
Details
III. Disciplinary and Criminal Sanctions
Details
3. Ruminations on the US Experience. What can European Courts and Legislators Learn from it?
Details
A. Extent of Patent Applicants’ Duties
Details
I. Defining the Scope of the Obligation
Details
II. Practical Value
Details
III. Interest of Applicants Themselves to have All Prior Art Considered
Details
IV. Duty of Advocacy
Details
B. Legal Consequences of a Deceitful Conduct before the Patent Office
Details
I. Evaluation of the inequitable conduct doctrine in the US
Details
II. Would it be advisable for European courts to implement a similar doctrine?
Details
117–298
PART II: THE IMPROPER ACQUISITION OF PATENTS AS A COMPETITION LAW PROBLEM
117–298
Details
Chapter IV: Competition and Competition Law Tools
Details
1. Goals of Competition Law
Details
2. Legal Framework in the EU and in the US
Details
A. Essential Pillars of the Competition Legal Framework
Details
B. § 2 Sherman Act and Article 102 TFEU. Scope and Objectives
Details
I. The First Element: Market Power
Details
a. Market Definition
Details
i. Product and Geographical Markets. The Hypothetical Monopolist Test
Details
ii. Demand and Supply Substitution
Details
iii. Product and Technology Markets
Details
iv. Competition without markets. From Innovation Markets to Competition in Innovation
Details
b. Market Power
Details
i. Indirect Methods of Establishing Market Power. Market Shares, Entry Barriers and other Indicia
Details
ii. Is Market Definition Always Necessary? Direct Methods of Establishing Market Power
Details
II. The Second Element: the Abusive or Anticompetitive Behaviour
Details
a. Types of Anticompetitive Conducts: Exclusionary and Exploitative Behaviours
Details
b. The Importance of Timing: Dominance as a Prerequisite under EU Law. Differences with US’ Monopolisation and Attempt to Monopolise
Details
c. Causation: The Relationship between Market Power, Anticompetitive Conduct and Anticompetitive Effects
Details
d. The Role of Intent
Details
C. The Particular Case of § 5 FTC Act
Details
Chapter V: Applying Competition Rules to Patent Proceedings: The Experience in the US and in the EU
Details
1. The Interaction between Intellectual Property Rights and Competition Law
Details
A. Tension and Complementarity
Details
I. Social and Economic Functions of the Patent System
Details
II. Patents and Market Power
Details
III. Reciprocal Goals but Conflicting Means
Details
B. When is Competition Enforcement Warranted in the Intellectual Property Arena?
Details
I. The Scenario in the US
Details
a. Evolution of the Interrelation between Antitrust and Intellectual Property
Details
b. Antitrust Immunity and the Noerr Doctrine
Details
c. The Patent Misuse Doctrine
Details
II. The European Approach
Details
a. Existence v Exercise Dichotomy
Details
b. The Specific Subject-Matter Standard
Details
c. Current Stage of the Debate
Details
d. Is there a Petitioning Immunity Doctrine in Europe?
Details
2. How can Deceptive Conducts before the Patent Office Affect Competition? The Experience and Challenges under US and EU law
Details
A. US Case Law. Fraud to the Patent Office and Misuse of Orange Book Listings
Details
I. Walker Process and its Progeny
Details
a. The Walker Process decision
Details
b. The Walker Process Legacy
Details
c. The Handgards or ‘Bad Faith Litigation’ Antitrust Claim
Details
II. Orange Book Cases
Details
B. EU Competition Law. Improper Acquisition of Intellectual Property Rights. Impact on Member States’ Competition Practice
Details
I. The AstraZeneca Case
Details
a. Market Definition and its Dominance
Details
b. The First Abuse
Details
c. The Second Abuse
Details
II. AstraZeneca’s Aftermath: Cases in EU Member States
Details
3. Closing Remarks and Open Questions
Details
Chapter VI: Searching for a Workable Theory of Harm
Details
1. Introduction
Details
2. The Sham or Vexatious Litigation Doctrine
Details
A. The Development of Sham as an Antitrust Doctrine in the US and in the EU
Details
I. Sanctions under Other Areas of Law
Details
II. Sham as an Antitrust Injury in US Case Law
Details
III. Vexatious Litigation in the EU
Details
B. The Theory of Harm Underlying the Sham Doctrine
Details
I. Antitrust Injury
Details
II. The Two-Pronged Test in the US and in the EU
Details
a. Objective Baselessness or ‘Legal Inviability’
Details
b. Intent or ‘Economic Inviability’
Details
III. Individual vs Patterns of Anticompetitive Litigation
Details
IV. Litigation as part of a Broader Pattern of Conduct
Details
C. Wrapping-up: A Simple Genus-Species Relationship?
Details
3. Deceptive Conduct before the Patent Office as a Case of Inducing Government Action through Improper Means
Details
A. Deceptively Inducing Government Action as a Competition Law Concern
Details
I. The General Question under US Law
Details
II. The General Question under EU Law
Details
III. Can a Deceptive Conduct before the Patent Office be analysed as an Illegitimate Inducement of Government Action?
Details
B. Elements for Competition Assessment
Details
I. Materiality and Causal Connection
Details
II. Conceptualisation of the Misconduct
Details
III. Ministerial Acts and Discretion of the Patent Office
Details
IV. Effects on Competition
Details
a. Exclusionary Effects of Improperly Granted Patents
Details
b. Scope of and Entitlement to the Patent
Details
c. Consumer Harm and Objective Justifications
Details
V. Market Power
Details
a. The Case under § 2 Sherman Act. Monopolisation and Attempt to Monopolise
Details
b. The Case under art 102 TFEU. Market Dominance as a Pre-requisite
Details
C. Ownership or Enforcement of an Improperly Obtained Patent as an Antitrust Concern
Details
I. The Case under US Law and Walker Process’ Enforcement Requirement
Details
II. The Case under EU Law
Details
a. A case for Article 102(a) TFEU or duty to license?
Details
b. ‘Single and Continuous’ Abuses
Details
c. Ownership or Enforcement as Separate Exclusionary Abuses?
Details
299–318
PART III: CONCLUSIONS
299–318
Details
Chapter VII: Summary and Conclusions
Details
1. The Role of Patent Applicants in the US and in Europe. Duties and Remedies under Patent Law
Details
A. The Scenario under US Law. A Strict Duty of Candour and the Inequitable Conduct Doctrine
Details
B. The Scenario under EU Law
Details
C. Would it be Desirable for Europe to Implement an Increased Duty of Candour or an Inequitable Conduct Doctrine?
Details
I. Extent of Patent Applicant’s Duties
Details
II. Legal Consequences of the Deceitful Conduct
Details
2. The Patent Applicant’s Conduct as a Competition Law Concern
Details
A. The Experience so far in the US and in the EU
Details
I. The Scenario in the US: Walker Process and its Progeny
Details
II. The Scenario in the EU: AstraZeneca
Details
B. Sham or Vexatious Litigation Distinguished
Details
C. Deceptive Conduct before the Patent Office as a Case of Inducing Government Action through Improper Means
Details
I. The General Framework in the US and in the EU
Details
II. Elements for Competition Assessment
Details
a. Causal Link
Details
b. Conceptualisation of the Misconduct
Details
c. Discretion of the Patent Office
Details
d. Anticompetitive Effects
Details
e. Market Power
Details
III. Ownership or Enforcement of Fraudulently Obtained Patents
Details
319–335
Bibliography
319–335
Details
Durchsuchen Sie das Werk
Geben Sie ein Keyword in die Suchleiste ein
CC-BY
Access
Deceptive Conducts before the Patent Office , page 31 - 116
PART I: GENERAL RULES ON THE PATENTING PROCEDURE
Autoren
Eugenio Hoss
DOI
doi.org/10.5771/9783748902577-31
ISBN print: 978-3-8487-6134-0
ISBN online: 978-3-7489-0257-7
Chapter Preview
Chapter Preview
Share
Current chapter
Complete document
Download citation
RIS
BibTeX
Copy DOI link
doi.org/10.5771/9783748902577-31
Share by email
Video schließen
Share by email Nomos eLibrary
Recipient*
Sender*
Message*
Your name
Send message
This site is protected by reCAPTCHA and the Google
Privacy Policy
and
Terms of Service
apply.