Inventive step

The inventive step reflects a general patentability requirement in most patent laws, according to which an invention should be sufficiently inventive (not obvious in view of the prior art using the skilled person’s common general knowledge) in order to be patented / the patent to be held valid. In the United States, rather than ‘inventive step’, the expression ‘non-obviousness’ is used: is the invention an adequate distance beyond or above the state of the art? The assessment of the inventive step varies from one country to another.  The European Patent Office uses the so-called problem-and-solution approach to assess inventive step, an instrument also used by several national European courts.

Biologics, Case Law, Covid-19, Damages, Infringement, Inventive step, Patents, United Kingdom, Validity

(Bristows)/ /1 Comment

Moderna secured a double victory in the Patents Court last week (2 July 2024) in proceedings against Pfizer and BioNTech.  In the first decision, Meade J found its modified mRNA patent to be valid and infringed by Pfizer and BioNTech’s “Comirnaty” vaccine.  In the second decision, Richards J rejected Pfizer and BioNTech’s defence based on…

Case Law, evidence, Infringement, Inventive step, Novelty, Patents, Pharmaceutical patent, United Kingdom, Validity

(Bristows)/

In his Abbott v Dexcom ([2024] EWHC 1664 (Pat)) judgment, published on 28 June 2024, Mr Justice Mellor was faced with the rather unenviable task of determining the approach of the Skilled Team when “due to their differing experiences and expertise” it was unclear if any of the experts were in a position to comment…

Case Law, Infringement, Injunction, Inventive step, Litigation, Patents, Pharma, Pharmaceutical patent

(Bristows)/

The recent rivaroxaban PI cases may have caused you to ask yourself whether the American Cynamid principles for determining whether or not to grant preliminary injunctive relief in the UK are dead or at least dying.  In this article we consider the facts of the rivaroxaban PI applications and aim to tease out some principles…

AI, Inventive step, Novelty, Patents, Technology

(City, University of London) and (University School of Law and Legal Studies, New Delhi)/ /3 Comments

Blurring the edges between reality and make-believe, the Metaverse is part of an aspirational Web 3.0, characterised by certain features including an immersive 3D virtual space, interoperability, and real-time operation. While there is no consensus on its definition, certain foundational technologies such as AI (artificial intelligence) and XR (extended reality), which includes VR (virtual reality),…

Equivalents, Infringement, Inventive step, Litigation, Novelty, Patents, Pharma, United Kingdom, Validity

(Bristows)/ /2 Comments

Advanced Cell Diagnostics v Molecular Instruments [2024] EWHC 898 (Pat) On 23 April 2024, Mr Justice Meade handed down his judgment in the dispute between Advanced Cell Diagnostics (ACD) and Molecular Instruments (MI). ACD is the proprietor of two European patents which relate to in situ detection of nucleic acids in single cells.  EP (UK)…

Inventive step, Patents, Procedure, United Kingdom, Validity

, (Bristows)/ /1 Comment

Introduction It is common for parties to English patent litigation to settle their differences after the first instance judgment on the merits from the Court.  This is for several reasons including the thoroughness of the Patents Court Judges, the Court of Appeal’s approach to issues such as obviousness (where only an error of principle will…

Case Law, EPO, Inventive step, Opposition, Patents, Plausibility

, (Hoffmann Eitle)/ /9 Comments

Following the issuance of G 2/21 last year, we asked whether the plausibility elephant had left the room. Our Kluwer colleague and friend Miquel Montañá discussed this issue more recently here. Several decisions have meanwhile been issued applying the new “test” in G2/21, the lucidity of which may have reminded readers of the oracle of…

Generics, Infringement, Inventive step, Sufficiency of disclosure, United Kingdom

(Bristows)/

A hefty judgment was recently handed down by Mellor J concerning a patent for a modified release formulation of mirabegron. The patent was held to be valid and not infringed by Sandoz, while infringement with respect to Teva (which had admitted infringement with an earlier version of its product but sought a declaration of non-infringement…

Enforcement, Generics, Infringement, Injunction, Inventive step, Netherlands, Patents, Plausibility, Procedure

(Brinkhof)/

The Status Quo injunction is not a variation on Wayne’s World classic “No Stairway, Denied” joke. While some may yearn for a ban on their generic tunes,  Status Quo is still not denied. That is not the faith of all generics, as Teva found out in Dutch litigation over its generic version of Grünenthal’s Nebido:…

Case Law, Infringement, Inventive step, Pharma, Pharmaceutical patent, United Kingdom, Validity

(Bristows)/

On 25 July 2023, the Court of Appeal handed down its decision in Teva & Sandoz v Astellas[1] concerning the validity of Astellas’ patent to mirabegron for use in the treatment of overactive bladder (“OAB”).  At first instance, Meade J had held the patent valid and infringement by the generics’ proposed acts was not separately…