Opposition systems are closely related to the patent granting procedure, and offer third parties an opportunity to oppose the grant of a patent, by giving notice of opposition to the granting authorities. In some states, there is a pre-grant opposition procedure, in others it is a post-grant procedure. Reasons for opposition may be that the invention is not new, does not involve an inventive step, is not susceptible of industrial application, is excepted from patentability, that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, or that the subject-matter of the patent extends beyond the content of the application as filed, for instance.
When challenging the validity of a patent, a decision needs to be made early on as to grounds on which to rely. When it comes to allegations of anticipation and obviousness, the challenger and its advisers will need to consider whether to rely or just one or two prior art citations or to include a…
Questions submitted to the Enlarged Board. During opposition the Proprietor announced that it wanted a correction of the decision to grant from the examining division. The opposition division decided to stay proceedings and the Opponent appealed the decision to stay. The Board submitted questions to the Enlarged Board, asking (1) whether a request for correction…
A 1 July 2009 decision of the Tribunal de Grande Instance of Paris illustrates how the French courts proceed when they are seised of a nullity claim of the French designation of a European patent against which opposition may be filed or opposition proceedings are pending.
The Board considered whether the introduction of the EPC 2000 raised the requirements for a notice of appeal to be admissible. Rule 99(1)(c) EPC 2000 requires that the notice of appeal contains ‘a request defining the subject of the appeal’. Rule 64 EPC 1973 required that the notice of appeal contains a statement identifying ‘the…
The District Court of The Hague granted Mundipharma a provisional injunction against Sandoz for infringement of its patent for a controlled release oxycodon formulation. The District Court suspended its decision on the validity and infringement of the patent in the main action until a final decision has been rendered in the opposition proceedings. The Court…
The Enlarged Board of Appeal answers three questions of law as follows: Question 1: Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness. Question 2: Such patenting is…
The patent proprietor appealed a decision of the Opposition Division, wherein the Opposition Division decided to maintain the patent in amended form. In appeal the patent proprietor filed a new main request and seven auxiliary requests. The second auxiliary request corresponded to the request that was found allowable by the Opposition Division. The Board of…
According to the District Court of The Hague, Administrative division, Article 19 (2) of the SPC Regulation on medicinal products prohibits the ‘opposition’ in a national procedure by a third party against the grant of a pediatric extension of the duration of a Supplementary Protection Certificate. Third parties may submit an application for revocation of…
On 30 July 2009, the Commercial Court of Granada ordered an ex parte preliminary injunction against two companies that had obtained authorisation to market generics of sustained-release pharmaceutical compositions of Fluvastatin in Spain. Interestingly, on 27 April 2009, Commercial Court number 3 of Madrid had rejected a request for a preliminary injunction against other companies…
In the case at hand, Olympus filed a petition for review against the decision of the Board of Appeal to revoke Olympus’ patent. Olympus argued that it had had no opportunity to comment on the grounds for this decision as it had never received the statement of the grounds of appeal and the invitation to…
