Exceptions to patentability, United States of America

(Foley&Lardner LLP)/

The USPTO has issued new Guidance For Determining Subject Matter Eligibility to help examiners apply the principles of Myriad and Prometheus to any claim “reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products.” The guidelines focus on a “signficantly different” test, and include lists of factors that weigh towards and against patent eligibility. The guidelines also include several…

(Indirect) infringement, Chemical Engineering, Countries, Enforcement, European Union, Germany, Injunction, Procedure

(Rospatt Osten Pross)/

The use and circulation of a product which has been put on the market by the patentee or a third party acting with the consent of the patentee (e.g. a licensee) cannot be prohibited by the patentee anymore. This concept of exhaustion is not only applicable to the territory of Germany, but to the entire…

UPC

(Clifford Chance)/

UPC aficionados will be interested to learn that the 16th draft of the Rules of Procedure was unveiled yesterday. Readers will remember that the previous draft was published on 31 May 2013. Since then, the Drafting Committee has been working on a new draft that may – or may not – accommodate the comments received…

European Union, UPC

(Hoffmann Eitle)/

In our previous blog Opting out and Opting in we discussed some of the questions regarding the transitional regime under the Unified Patent Court Agreement (UPCA). Due to its importance and ambiguity this provision continues to be a source of considerable controversy, so much so that the Preparatory Committee, which is tasked with preparing the…

Case Law, Germany, Inventive step

(Hoffmann Eitle)/

General disadvantages of fixed-dose combinations cannot reduce the reasonable expectation of success derivable from the prior art with respect to the formulation of a pharmaceutical composition containing two specific active pharmaceutical ingredients. A synergistic effect is not suitable to establish inventive step of a fixed-dose combination of two active pharmaceutical ingredients, where the synergistic effect…

Austria, Case Law, Scope of protection

(Gassauer-Fleissner Rechtsanwälte GmbH)/

1. Also in case a dependent claim is patentable on its own, fulfillment of all features of both the main claim and the dependent claim is required for infringement. 2. The scope of a patent is defined by its claims; the prosecution file may only be considered for interpretation if there are contradictions between the…

(Indirect) infringement, Case Law, Germany, Scope of protection, Second Medical Use

(Krieger Mes Graf & v. der Groeben)/

The Court of Appeal Düsseldorf held that the offering of certain products by the defendants was not covered by the scope of the patent due to the specific “Swiss type” wording, which does not grant an absolute product protection, and due to the fact that the advertising of the defendants did not address the patented…