The Hatch-Waxman Act allows the FDA to permit a generic version of a branded product, which is partially patent protected, to come to market if the generic manufacturer “carves out” the patent-protected indication from its label. The scope of protection from a finding of induced infringement afforded to generic manufacturers by this “skinny label” provision…
In Omni MedSci, Inc. v. Apple Inc., ___ F.4th ___, Nos. 2020-1715, -1716 (Fed. Cir. Aug. 2, 2021), the U.S. Court of Appeals for the Federal Circuit held that the University of Michigan’s technology transfer bylaws did not constitute an automatic assignment of a professor’s patent rights. This decision has important implications for the drafting…
In an Iberian validity dispute pitching a Spanish generics manufacturer against Portugal’s national pharmaceutical champion Bial Portela, the busy and influential Barcelona Commercial Court No. 5 rules on the “problem-solution approach”. In line with other recent decisions, the Court confirms i) that it may depart from the claimant’s choice of closest prior art and ii)…
Although the grounds of the decision under R. 111(2) EPC do not have to deal in detail with all the arguments of the parties, at least the key points of discussion must be addressed. The grounds must respond to the relevant facts, evidence and arguments and contain the logical chain that led to the formation…
A change in the composition of the Examining Division is legally allowed. This does not jeopardize the right to be heard and to a fair trial. The ‘equality of arms’ is not hampered by the introduction in a late stage of examination and in particular during the oral proceedings before the Examining Division, of new…
Introduction The implementation of 4G mobile communication technology in the UK has become very expensive for Apple in light of the High Court of England and Wales’ decision last month in Optis v. Apple. The court held that Optis’s standard-essential patents (‘SEPs’) were infringed by Apple. The court added that it was willing to decide…
According to established case law, it is sufficient for the realization of a feature containing an indication of purpose if the device protected is suitable for use for the purpose mentioned due to its structural design. In the case of a feature that is claimed in a generalized form, the patent specification does not have…
On 25 June 2021 Meade J handed down his decision in the second of a series of trials listed as part of the Optis v Apple UK action ([2021] EWHC 1739 (Pat); a link the judgment is here). This decision concerned the validity and infringement of EP (UK) 2 229 744. This patent had previously…
In a surprising decision, the Federal Court has modified the law of patent term extensions in Australia, by clarifying that it’s only the patentee’s goods that are relevant to the proposed extension – not those of a competitor, even if the competitor’s goods came first and also contain a “pharmaceutical substance per se” that is…
A board of appeal of the EPO held that for the problem-solution approach to inventive step the requirement of the same “purpose or effect” in the criteria for selecting the closest prior art for a claim refers to the purpose or effect of the claimed subject-matter as a whole, not just of its distinguishing feature(s)….
