Different views from the EPO and Germany on the same case 1. Introduction Functional features in patent claims may provide protection not only for specific embodiments disclosed in the patent specification, but also for undisclosed (future) embodiments. A classic example is a claim of the format “An inhibitor of protein P for the treatment of…
According to a recent decision of the Administrative Council, from November 2014 it will be possible, by paying appropriate further search fees, to obtain searches of any claimed invention when entering the EPO Regional phase with a PCT application, regardless of which Searching Authority handled the application in the International phase. It will thus be…
In a decision handed down on October 23, 2013, the Polish Supreme Court confirmed that the Bolar exemption does not cover activities by third-party manufacturers, i.e. supplying active ingredients for studies and trials to be conducted by third-party generic manufacturers (court docket: IV CSK 92/13). Parallel proceedings in Germany are pending. We have reported before…
While the preparations for the future EU Patent Package are ongoing, it may be useful to familiarize oneself somewhat with some of the key options that the new patent system will offer to its users if and when it has been enacted. According to Art. 3 UPCA the future Unified Patent Court (UPC) will have…
In Medeva (C-322/10 of 24 November 2011) the Court of Justice of the European Union (CJEU) had ruled that a Supplementary Protection Certificate relating to a combination of active ingredients can only be granted in view of Art. 3(a) of the Regulation (EC) No. 469/2009, if the active ingredients are “specified” in the wording of…
With its decision of July 25, 2013 (6 U 541/12), the Higher Regional Court Munich confirmed the first-instance decision finding that licenses under the patents of an insolvent company remain valid and enforceable. This case relates to the spinning-off of the stand-alone memory business unit from Infineon AG to the newly established Quimonda AG, and…
The Mannheim Regional Court decided on March 8, 2013 (court docket: 7 O 139/12) that a supplier which is located abroad is regularly only liable for participating in patent-infringing acts in Germany if the foreign supplier learns, e.g. by means of a warning letter, that its supply of products to the German market may result in a patent infringement under German law and if the supplier does not refrain from further shipments into Germany.
and Bernd Kröger. A combination of two pharmaceutical ingredients, i.e. leflunomide and teriflunomide is to be considered obvious if the person skilled in the art uses an obvious process to obtain leflunomide that automatically results in – even with a certain delay – both components due to a chemical reaction. Click here for the full text…
(1) The FCJ decided that if a plaintiff can prove there was an “offering” of means for the patented purposes, it can be assumed that the means were also delivered for those purposes, and that therefore the plaintiff has a right to claim damages and the provision of information due to indirect infringement. The means of proof will be sufficient even if, in cases of indirect infringement, it was only with the delivery for the patented purposes that the damages were incurred.
(2) Furthermore, when a patent is assigned during pending patent infringement proceedings, the right of the assignee to claim damages shall arise starting on the date of the assignment agreement, and not on the date of registration (contrary to the case law of the Higher Regional Court Dusseldorf). With regard to claims to damages for the time period after assignment, the plaintiff (assignor) will need to assert that payment must be made to the assignee.
The main principles applicable for assessing whether a non-disclosed disclaimer meets the requirements of Article 123(2) EPC have been laid out in the decision G 1/03 of the Enlarged Board of Appeal (EBA) of the EPO. In the recent decision G 2/10 dated September 19, 2011 a new test for assessing the allowability of non-disclosed disclaimers, the so called “Remaining Subject-Matter Test”, has been established. In applying this test, disclaimers which in the past would have been considered to be allowable in view of G 1/03 may now be (and actually have been)found to actually be in violation of Article 123(2) EPC.
