Exceptions to patentability

Some inventions cannot be patented. According to the WIPO this is necessary ‘in order to strike the right balance between the interests of the right holders, third parties and the public’. According to Article 53 of the European Patent Convention (EPC) European patents shall not be granted in respect of inventions the commercial exploitation of which would be contrary to “ordre public” or morality (..); plant or animal varieties or essentially biological processes for the production of plants or animals; (…) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

Antibodies, Exceptions to patentability, Industrial application, NPE, Pharma, Sufficiency of disclosure, United Kingdom, Validity

(Bristows)/

by Rachel Mumby Those readers who are unfamiliar with the excessively optimistic outlook of Mr Wilkins Micawber in Charles Dicken’s novel David Copperfield, would be forgiven for having had to look up the word “Micawberism” on reading it in the judgment of Floyd J (as he then was) in Blacklight Power Inc. v The Comptroller-General…

Biologics, Exceptions to patentability, United States of America

(Foley&Lardner LLP)/

The Federal Circuit has issued its long-awaited decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc., but the decision is not good news for those seeking to obtain or enforce U.S. patents on diagnostic methods. The appeals court affirmed the district court’s finding that Sequenom’s claims are invalid under 35 USC § 101, applying the analytical framework set forth…

Countries, EPC, Exceptions to patentability, Germany

(Rospatt Osten Pross)/

The German Bundesgerichtshof (Federal Court of Justice, FCJ) has issued the decision “Bildstrom” (judgment of 26 February 2015, docket no. X ZR 37/13) dealing with the patentability of a system and a method for displaying an image stream. The attacked patent EP 1474927 concerns a technical teaching for displaying an image stream, wherein at least…

(Indirect) infringement, Exceptions to patentability, Pharma, Second Medical Use, Switzerland

(MLL Legal Ltd.)/

By Mark Schweizer, Reinhard Oertli and Simon Holzer The Swiss lawmaker plans to introduce a new exemption from patent protection for physicians and pharmacies. The new exemptions aims to protect physicians and pharmacies from being involved in patent disputes concerning second medical use claims according to the EPC 2000 (purpose-limited product Claims). From Swiss-type claims…

Enforcement, Equivalents, Exceptions to patentability, Extent of Protection, Industrial application, Inventive step, Scope of protection, United States of America

(Bristows)/

Dimitrios T Drivas (White & Case) gave the speedy run down on the following points and cases, which some might find useful for following up on points of interest: Supreme Court The decision that in exceptional cases reasonable attorney’s fees may be paid to the prevailing party (an exception to the rule that each party…

Biologics, Exceptions to patentability, United States of America

(Foley&Lardner LLP)/

Last week, in In Re Roslin Institute, the U.S. Court of Appeals for the Federal Circuit held that cloned cattle, sheep, pigs and goats are non-patent eligible subject matter under 35 USC § 101. While the result that these cloned animals cannot be patented may not be surprising, the basis for the court’s finding–that the claimed subject matter…

(Compulsory) license, Electrical Engineering, Exceptions to patentability, Italy, Validity

(Trevisan & Cuonzo)/

By ruling of 21 February 2014, the Court of Turin decided a case between the US corporation Rovi and a number of Italian consumers electronics manufacturers. These had produced / imported set-top-boxes equipped with Electronic Programme Guides (EPG) that allegedly made use of the Rovi EPG patents, although without being covered by the Rovi licensing scheme….

Exceptions to patentability, United States of America

(Foley&Lardner LLP)/

The USPTO has issued new Guidance For Determining Subject Matter Eligibility to help examiners apply the principles of Myriad and Prometheus to any claim “reciting or involving laws of nature/natural principles, natural phenomena, and/or natural products.” The guidelines focus on a “signficantly different” test, and include lists of factors that weigh towards and against patent eligibility. The guidelines also include several…

Biologics, Exceptions to patentability, United States of America

(Foley&Lardner LLP)/

On June 13, 2013, the U.S. Supreme Court issued its long-awaited decision in the “ACLU/Myriad” gene patents case (Association For Molecular Pathology v. Myriad Genetics, Inc.). In a unanimous opinion authored by Justice Thomas, the Court held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been…

Case Law, Chemical Engineering, Enforcement, Exceptions to patentability, Inventive step, Novelty, Prior use right, Sweden

(Bird & Bird)/

The Stockholm District Court held the Swedish part of a European patent concerning a method of growing two or more plants invalid, due to lack of inventive step. Despite requests for limitations by the proprietor the patent was declared invalid in its entirety. Infringement, exceptions to patentability and prior use rights were also considered by…