European Union

(Hoffmann Eitle)/

For some years the European Commission has been drafting a new “Regulation Concerning Customs Enforcement of Intellectual Property Rights” replacing present Regulation EC/1383/2003. It now appears that legislative procedure is almost complete. The Internal Market Committee of the European Parliament and the Permanent Representatives Committee of the Council have recently adopted a compromise text. After…

Biologics, Scope of protection, SPC, Validity

(Hoffmann Eitle)/

The German Federal Patent Court (FPC) has recently published its first decision (3 Ni 28/11 of 2 May 2012 “Ranibizumab”, GRUR 2013, 58) dealing with the interpretation of related CJEU Judgments “Medeva” (C-322/10) of 24 November 2011 and “University of Queensland” (C-630/10) of 25 November 2011. In the view of the FPC, the infringement test, which had been utilized by the German Federal Court of Justice in examining the condition of Art. 3(a) of the Regulation, can thus no longer be relied upon. Further, the FPC ruled that the requirement that an SPC can only be granted for active ingredients which are specified or identified in the wording of the claims of the basic patent, applies likewise to products of single active ingredients and combinations of active ingredients.

European Union

(Hoffmann Eitle)/ /5 Comments

Following the positive vote by the European Parliament on 10 December 2012 and the European Council of Minister’s adoption of the Regulation EU/1257/2012 on the Unitary Patent and the Regulation EU/1260/2012 on Translation Arrangements on 17 December 2012 and their publication in the OJ L 361 of 31 December 2012, the legislation process for the…

Case Law, Chemical Engineering, Germany, Inventive step

(Hoffmann Eitle)/

In the assessment of inventive step, the question whether the prior art discloses a pointer for the skilled person to use the measures described therein, and to apply these to a known substance, could be relevant. It should be investigated whether the measures from the prior art gave rise to the expectation that the solution…

Enforcement, Germany, Prior use right

(Hoffmann Eitle)/

The German Supreme Court this year passed two major decisions on the requirements for invoking a right to prior use. In its Desmopressin decision (June 12, 2012, X ZR 131/09), the Supreme Court ruled that knowledge regarding technical effects is not required for a prior user to be in possession of an invention as long…

EPC, Exceptions to patentability

(Hoffmann Eitle)/

EPO practice on patenting plants knows two exclusions that are defined in Art. 53(b) EPC: the exclusion of “plant varieties”, and the exclusion of “essentially biological processes for the production of plants”. The recent referral G2/12 may change this practice and may lead to the exclusion of plants depending on how they were made. The…

(Cross-border) jurisdiction, Germany

(Hoffmann Eitle)/

The CJEU decided yesterday that a negative declaratory action seeking to establish the absence of liability in tort, delict, or quasi-delict does fall within the scope of the “place of tort” pursuant to Article 5 (3) of Council Regulation (EC) No 44/2001 (“Brussels Regulation” or BR), case 133/07. This question has long been in dispute,…

(Cross-border) jurisdiction, European Union, Procedure

(Hoffmann Eitle)/

On 27 September 2012, a new consolidated version of the Draft Agreement on a Unified Patent Court (Document 14268/12) was (finally) published. The consolidated text includes some of the amendments agreed upon on 5 December 2011 as well as on the 29/30 June 2012 EU Council summit, and also presents further amendments and quite a…

Enforcement, European Union

(Hoffmann Eitle)/

On 3 July 2012, the European Parliament adopted the Commission’s proposal for a new Regulation on “Customs Enforcement of Intellectual Property” (COM(2011)0285) at first reading. The document P7_TA(2012)0272, which proposes many amendments, is the provisional position of the EP subject to further negotiations. Between October and November 2012, representatives of the Commission, the Council and…