EPC, Inventive step, Validity

(Hoffmann Eitle)/

In view of the principles outlined in the recent decision T 777/08 it has to be expected that in the future the inventiveness of a novel polymorph form of a pharmaceutically active compound will be acknowledged only if the novel polymorph form is associated with an unexpected pharmaceutical activity, while improved physical and/or physicochemical properties would not be sufficient. Also, an inventive step might be acknowledged if an inventive activity is required to actually manufacture the polymorph.

Germany, SPC, Validity

(Hoffmann Eitle)/

In this blog, we reported earlier about a new nullity action initiated in 2010 against the German supplementary protection certificate (SPC) for enantiomeric escitalopram and the judgment of the German Federal Patent Court (Bundespatentgericht – BPatG) in favor of the validity of the SPC. Meanwhile, the BPatG issued the written grounds for its decision.

Germany, Inventive step, Mechanical Engineering, Novelty, Validity

(Hoffmann Eitle)/

The Federal Court of Justice (FCJ) in Germany has held in its recent “Dentalgerätesatz” decision that claim 1 of EP 892 625 is novel since it claimed a new functional adaptation of otherwise known elements to serve a certain purpose. In doing so, the FCJ reversed the first-instance decision of the Federal Patent Court.

Amendments, EPC, Opposition

(Hoffmann Eitle)/ /1 Comment

During EPO opposition proceedings, patentees have historically been able to avoid discussing clarity by combining granted claims rather than using the description as basis for amendments. The landmark cases T 227/88 and especially T 367/96 have been relied on to support this position. However, some technical boards of appeal are now starting to engage in…

Germany, SPC, Validity

(Hoffmann Eitle)/

After the Federal Court of Justice (Bundesgerichtshof, BGH) had confirmed the validity of the German SPC for the enantiomeric escitalopram (and its underlying patent) in 2009, the Federal Patent Court (Bundespatentgericht) now confirmed in further nullity proceedings the validity of the SPC.

Extent of Protection, Germany, Novelty, Revocation, Validity

(Hoffmann Eitle)/

By final judgment of November 18, 2010 (Xa ZR 149/07, published in Mitt. 2011, 66 (in German only)), the German Federal Court of Justice (FCJ) decided on two interesting issues in nullity appeal proceedings regarding the German patent DE 101 41 650 pertaining to a patch containing the opioid fentanyl, a strong analgesic drug. Firstly,…

(Indirect) infringement, EPC, European Union, Injunction, Procedure, Validity

(Hoffmann Eitle)/ /2 Comments

The Court of Justice of the European Union (CJEU) has now issued its long awaited Opinion 1/09 on the draft agreement concerning the creation of a unified patent litigation system (UPLS). As is well known, this draft agreement drew on many provisions introduced for the first time by the European Patent Litigation Agreement (EPLA) and…

EPC, Procedure

(Hoffmann Eitle)/ /1 Comment

With the recent decisions of the EPO Administrative Council CA/D 2/10 and CA/D 12/10 of 26 October 2010, the provisions originally intended to expedite the examination proceedings before the EPO and to reduce the average time needed by the EPO for grant will be relaxed. One of these amendments will enter into force soon, i.e. on May 1, 2011.

Electrical Engineering, Extent of Protection, Germany, Revocation, Scope of protection

(Hoffmann Eitle)/

The German Federal Court of Justice (BGH) recently further confirmed the basic tendency of bringing national case law into line with that of the European Patent Office. In the decision “Wiedergabe topographischer Informationen” (Reproduction of topographical information)BGH.Wiedergabe.topografischer.Informationen.X.ZR.47-07, the Federal Court of Justice had to deal with a method and device for the perspective display of…