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Writing for IP Litigator, Alison Casey Analyzes Ruling in European Patent Office Proceeding Discovery Request

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May/June 2017 | Article

Alison C. Casey, an associate in Nutter’s Litigation Department, wrote an article in IP Litigator analyzing the recent decision by the U.S. District Court for the District of Massachusetts denying 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). In the article “Planning to Request Discovery for a European Patent Office Proceeding? Not So Fast, Rules the District of Massachusetts,” Alison notes that the case, In re Schlich, illustrates the need for inventors to be familiar with patent laws, procedures, and proceedings in foreign jurisdictions.

Alison points out that the district 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.

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