Planning to Request Discovery for a European Patent Office Proceeding? Not So Fast, Rules the District of Massachusetts

The Hon. F. Dennis Saylor, IV of the U.S. District Court for the District of Massachusetts recently denied a petitioner’s request under 28 USC § 1782 to take discovery related to patent inventorship in connection with an Opposition proceeding pending before the European Patent Office (EPO). The court, in exercising its discretion under the U.S. Supreme Court’s so-called Intel factors set forth in Intel Corp. v. Advanced Micro Devices, Inc., 542 US 241, 264 (2004), denied the petitioner’s request for discovery because the EPO generally does not allow the type of discovery requested by the petitioner in an Opposition proceeding, thus the petitioner’s requested discovery would have no place in an EPO Opposition.

Key Takeaways

  • This case illustrates the need for inventors to be familiar with patent laws, procedures, and proceedings in foreign jurisdictions.
  • The District of Massachusetts will focus on Intel’s discretionary factors when making decisions about whether to allow discovery for use in foreign tribunals under 28 USC § 1782.

Will U.S. or European Patent Law Prevail?

The petitioner, George Schlich, is a European patent attorney who brought this action as an agent of Intellia Therapeutics, Inc., a genome editing company based in the United States. Schlich petitioned the district court to order discovery under 28 USC § 1782 in connection with a proceeding before the European Patent Office related to an EPO-issued patent for an invention known as the CRISPR/Cas9 system, which provides scientists with an inexpensive and precise method of editing DNA for biological and medical research. The underlying dispute in the EPO is whether The Broad Institute, Inc., a biomedical and genomic research institute affiliated with MIT and Harvard, can rely on its U.S. provisional applications filing date for priority in its European patents.

The resolution of the EPO proceedings will turn on whether U.S. or European patent law applies. For example, Intellia argues that, under European law, Broad’s failure to name the same inventors on its European patent applications and its U.S. provisional applications means that Broad’s claim of priority fails. However, Broad contends that U.S. patent law should apply because the provisional applications were filed in the U.S., and under U.S. law inventor names need not be identical between the applications.

Discovery Ruled Not “Useful” or “Relevant”

Putting aside the parties’ choice-of-law arguments, the court found that, in its discretion, it could not issue the petitioner’s requested discovery for a foreign proceeding where the discovery would not be useful or relevant to the questions before the foreign tribunal. Since the petitioner failed to show that his requested inventorship discovery would be relevant to the Opposition proceeding, or that the EPO would be receptive to the court’s assistance, the district court denied the petitioner relief under 28 USC § 1782.

The case is In re Schlich, No. CV 16-91278-FDS, 2016 WL 7209565, at *1 (D. Mass. Dec. 9, 2016), reconsideration denied, No. CV 16-91278-FDS, 2017 WL 1015005 (D. Mass. Mar. 15, 2017).

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