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*SECTION 287 MARKING REQUIREMENT APPLIES TO SETTLEMENT LICENSES; FAILURE TO PLEAD LICENSEE COMPLIANCE BARS PRE-SUIT DAMAGES
VDPP, LLC v. Volkswagen Group of America, Inc., 24-2226 — Yesterday in an opinion by Chief Judge MOORE, the Federal Circuit affirmed a district court’s dismissal, without leave to amend, of VDPP’s suit against Volkswagen involving its patent on electrically controlled spectacles. VDPP argued settlement licenses of the patent were exempt from 35 U.S.C. § 287(a), so its proposed amended complaint need not plead the licensees’ compliance with the marking notice requirement to seek pre-suit damages. The Federal Circuit disagreed, explaining that a settlement license is no different from any other patent license and rejecting the asserted carve-out. Exempting settlement licensees from § 287 would undermine the statute’s purposes of avoiding innocent infringement, encouraging patentees to give public notice of patented articles, and helping the public identify them.
(1 to 4 stars rate impact of opinion on patent & trademark law)
HAVE YOUR SAY: HELP SHAPE THE FUTURE OF IPO’S STANDING IP COMMITTEE PROGRAM
IPO wants to hear from you. The IPO Standing IP Committee Program Survey is now open to all members, whether you’re a current, former, or prospective committee participant, and takes just a few minutes to complete. Your feedback will inform improvements to how committees are structured, how members are recruited and onboarded, and how IPO can offer more flexible ways to get involved, from project-based work to asynchronous contributions. Committees are one of the most valuable ways members engage with IPO, stay current on IP law and policy, and connect with peers in IP law. We want our program to work for you. Take the survey here by Friday, August 28 to help guide the future of IPO’s Standing IP Committees.
UPC-UPDATES: THE UPC AND SECRECY
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By Aloys Hüttermann, Michalski Hüttermann & Partner
The UPC’s Rules of Procedure contain two provisions dealing with secrecy. Rule 262 governs how third parties access the register, while Rule 262A governs how information can be kept (partially) confidential from the opposing party. As the “A” suggests, this rule was added at the last minute, and even changed virtually at the last second, to require that a natural person from each party always retains unlimited access to all documents.
The UPC_CoA 423/2025 decision illustrates that this arrangement is not unproblematic in cases involving multiple defendants, who themselves may be competitors. There, the court ruled that no party can be excluded from access, and that protection instead depends on all involved parties’ good behavior.
Importantly, if a party includes a trade secret in a brief without filing a Rule 262A request, the trade secret is deemed lost due to inadequate protection measures (UPC_CoA 930/2025).
True “attorneys’ eyes only” proceedings may be available where all parties agree, as reflected in a recent order from the Division The Hague (UPC_CFI 1568/2025). By contrast, the court reached the opposite result where one party objected (UPC_CFI 1034/2025). Off-the-record comments by judges suggest other major divisions will grant such requests as well.
AKIN HELPS ATTENDEES STAY CONNECTED AT THE IPO ANNUAL MEETING
Great ideas deserve great connections. Akin Gump Strauss Hauer & Feld LLP is sponsoring the WiFi at the IPO Annual Meeting in Toronto to help attendees stay connected as they learn, network, and share insights throughout the conference. For more information or to register, visit www.ipo.org/am2026.
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