In China, a patent owner’s statements made during prosecution or invalidation may give rise to prosecution history estoppel (or prosecution disclaimer), which precludes the patent owner from recapturing subject matter that was relinquished during prosecution or invalidation in subsequent infringement actions. To invoke the doctrine of prosecution disclaimer, such statements must constitute a clear and…
In T 2130/11 the Board held that a disclaimer removing more than strictly necessary to restore novelty would not be in contradiction with the spirit of G 1/03 if it was required to satisfy Article 84 EPC and it did not lead to an arbitrary reshaping of the claims.
The juxtapositon of patent limitations in national nullity proceedings and before national patent offices on the one hand and according to article 105a EPC on the other hand is a hotly debated issue not only in Switzerland. In a recently published decision of 2 June 2014 (4A_541/2013), the Swiss Federal Supreme Court had to decide –…
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.
The Paris District Court clarified its interpretation of Article 123 EPC regarding disclaimer allowability and allowed a disclaimer restoring novelty of a patent. Click here for the full text of this case. A summary of this case will be posted on http://www.Kluweriplaw.com .
The Court decided it has jurisdiction in preliminary proceedings in respect of the alleged unlawful act by a Dutch company, consisting of facilitating – as the holder of a marketing authorization – its Portuguese fellow subsidiary to infringe the Portuguese part of a European patent and corresponding SPC in Portugal, based on Article 31 EC…
Litigation and EPO Oppositions/Appeals surrounding a controlled-release dosage form of the drug oxycodone, a morphine-like opioid analgesic developed in 1918, has kept Europe’s Pharma IP Lawyers busy for a couple of years. One of the key EP patents in this battle has been EP 722 730, and almost everything about this patent is out of…
On August 30, 2011 the Enlarged Board of Appeal rendered its decision on the admissibility of a disclaimer whose subject-matter is disclosed as an embodiment of the invention in the application as filed. It can be expected that the EPO will change its current restrictive practice in view of this decision, again allowing disclaimers for disclosed subject-matter under certain conditions. However, the Enlarged Board of Appeal did not endorse the view that disclaiming disclosed subject-matter is always allowable. Hence, until further Board of Appeal decisions will bring more clarity as to the specific situations in which such disclaimers are allowable, there will remain a degree of uncertainty.
The Borgarting Court of Appeal overturned the district court decision which revoked the patents in suit for lack of inventive step. The Court held that even if oxycodone had been known and used to treat pain as an alternative to morphine, the skilled person could not have predicted that a controlled release formulation with oxycodone…
The Court addresses the issue of how to deal with a feature of a patent claim that was not originally disclosed, but the deletion of which would lead to a broadening of the scope of the claim and would thus not be admissible. The Court allowed that the feature remains in the claim, provided that…
