(Cross-border) jurisdiction, Damages, Enforcement, Germany, Injunction, Mechanical Engineering

(Hoffmann Eitle)/

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.

Case Law, Chemical Engineering, Germany, Inventive step, Novelty, Validity

(Hoffmann Eitle)/

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…

Enforcement, Germany

(Hoffmann Eitle)/

(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.

Added matter, Amendments, Disclaimer, EPC

(Hoffmann Eitle)/

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.

Germany, Inventive step

(Hoffmann Eitle)/

One of the big difficulties in the everyday evaluation of inventive step revolves around the role that the problem underlying the invention should play in such evaluation. Two examples of more recent decisions of the German Federal Court of Justice are provided here to illustrate “the problem”. In its decision Kosmetisches Sonnenschutzmittel III (X ZR…

Enforcement, Germany

(Hoffmann Eitle)/

The FCJ decided in the recently published decision “Wundverband” [Wound Dressing] “Moelnlycke Health Care v. BSN Medical” (docket X ZR 70/12) on 19 February 2013 that if patentee has granted an exclusive license after he has filed an infringement action, an exclusive licensee will be (in part) a legal successor of the patentee. As a…

Enforcement, Germany, Injunction, Inventive step, Novelty, Validity

(Hoffmann Eitle)/

In its “Leflunomid” decision of 24 July 2012 (Case X ZR 126/09), the FCJ declared a patent claim to be invalid which covered a combination of leflunomide and teriflunomide, on the grounds that it had long been known in the prior art (for 100 years) that some leflunomide spontaneously and unavoidably converts teriflunomide over time…

(Compulsory) license, European Union, Germany

(Hoffmann Eitle)/

The Regional Court Dusseldorf submitted on 21 March 2013 a referral to the CJEU with five questions regarding the interpretation of Art. 102 TFEU relating to the antitrust objection of compulsory license in patent infringement actions. The patent infringement action at issue is concerned with a LTE-standard-essential patent. The plaintiff declared its readiness via the…

Amendments, Chemical Engineering, EPC, Extent of Protection

(Hoffmann Eitle)/ /1 Comment

Article 123(3) EPC stipulates that a European patent may not be amended in such a way as to extend the protection it confers. A special case of extension of the protective scope may occur in claims which define both the type of and the amount of a specific component. An issue addressed in a series…