Sufficiency of disclosure

According to article 83 European Patent Convention (EPC): ‘The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.’ For the disclosure to be sufficient at least one way of carrying out the invention should be disclosed in the description such that it is apparent to the skilled person how to put the invention into practice. Lack of sufficiency is a ground for revocation of a European patent in opposition proceedings at the European Patent Office, and for invalidation by national courts.

Biologics, Covid-19, Inventive step, Plausibility, Sufficiency of disclosure, United Kingdom, Validity

(Bristows)/

On 8 October 2024, Mr Justice Meade handed down judgment in BioNTech SE and Pfizer Inc., (together, BioNTech/Pfizer) v CureVac SE. Meade J found CureVac’s patents, relating to split poly(A) tails in mRNA, invalid for obviousness and insufficiency due to (i) lack of plausibility and (ii) because the purported technical effect does not in fact…

Antibodies, EPO, Inventive step, Sufficiency of disclosure, UPC

(Dhenne Avocats)/ /1 Comment

On 16 July 2024, the Munich Central Division revoked a patent for the first time in the litigation between Sanofi, Regeneron, and Amgen (UPC_CFI_1/2023). This decision is important not only because it is the first of its kind, but also because it establishes UPC’s position on the patentability of therapeutic antibody inventions. In this case,…

Inventive step, Patents, Pharma, Pharmaceutical patent, Priority right, Spain, Sufficiency of disclosure, Validity

(Clifford Chance)/ /2 Comments

This morning, the Barcelona Appeal Court has announced a judgment of 18 July 2024, reversing the judgment of 15 January 2024 from Commercial Court number 4 of Barcelona, which had found patent EP 1,427,415 (“EP ‘415”), protecting apixaban, to be invalid. The main highlights of the decision may be summarized as follows: The first interesting…

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…

Case Law, Inventive step, Litigation, Patents, Pharmaceutical patent, Plausibility, Sufficiency of disclosure, United Kingdom, Validity

(Bristows)/ /2 Comments

On 4 May 2023, a mere two weeks after the conclusion of the hearing, the Court of Appeal handed down its decision in Sandoz and Teva v BMS. The appeal decision is centred on the question of plausibility and comes hot on the heels of the Enlarged Board of Appeal’s decision in G 2/21. Indeed,…

Added matter, Amendments, Case Law, Infringement, Litigation, Patents, Pharma, Pharmaceutical patent, Plausibility, Revocation, Sufficiency of disclosure, United Kingdom, Validity

, , (Bristows)/

On 21 March 2023, Meade J gave a bumper judgment in the revocation action brought by Gilead in respect of two of NuCana’s patents from the same family (EP (UK) 2 955 190 and EP (UK) 3 904 365, the “Patents”), which relate to nucleoside analogues.   Filling 102 pages, the judgment raises a number of…

Case Law, Revocation, Spain, Sufficiency of disclosure

(Clifford Chance)/

Judgments from the Spanish Supreme Court on patent cases are a rare occurrence. In a recent decision, the Court rules on insufficiency of disclosure, a revocation ground which – once somewhat of a sideshow – is nowadays a staple of Spanish revocation proceedings. The Supreme Court provides some guidance on trial and error and undue…

Patents, Spain, Sufficiency of disclosure

(Clifford Chance)/ /1 Comment

A judgment of 7 July 2021 from the Spanish Supreme Court has been published, which, as discussed below, following the case law from the EPO’s Boards of Appeal, introduces certain guidelines for assessing whether or not an invention is sufficiently described. The background of the case can be summarized as follows: The complainant filed a…

Litigation, Pharmaceutical patent, Plausibility, Second Medical Use, Sufficiency of disclosure, United Kingdom, Validity

, (Bristows)/ /1 Comment

In undoubtedly one of the most important decisions of the year so far, on 24 August 2021, the English Court of Appeal handed down its judgment in FibroGen v Akebia (FibroGen Inc v Akebia Therapeutics Inc [2021] EWCA Civ 1279), partially allowing FibroGen’s appeal, and so finding one of the ‘Family A’ patents, EP 823,…

AI, Case Law, EPO Decision, Inventive step, ownership, Patents, Sufficiency of disclosure, Validity

(Dhenne Avocats)/

I can imagine what the reader might think when reading these few lines: another text on artificial intelligence (“AI”) and the Patent Law! (With perhaps: the author is obsessed with the Daft Punk split[1]). My mantra is: “Never disappoint the reader”! So both are true. That said, concerning the reception of AI by Patent Law…