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.
There is insufficiency of disclosure if the skilled person must deliberately ignore a feature of the claim which is perfectly understandable per se in order to work the invention. Click here for the full text of this case. A summary of this case will be posted on http://www.Kluweriplaw.com
In our post on 30 October 2012 we referred to forthcoming appeals dealing with how the question of obviousness should be tackled by the English courts. The Court of Appeal has now given its verdict in several judgments. The latest decision in Regeneron v Genentech dealt not only with the question of obviousness but also…
On 20 March 2012, the Tribunal de Grande Instance of Paris rendered its decision in the case relating to raloxifene, a molecule useful for treating or preventing osteoporosis in post-menopausal women, opposing Teva to Eli Lilly. This decision raises many questions, first concerning drug patents in particular (patentability of second medical use, patentability of the resolution of…
The English High Court has upheld the decision of the UK Intellectual Property Office to refuse the grant of a patent for the treatment of inflammatory bowel disease (IBD) with zinc (El-Tawil v The Comptroller General of Patents [2012] EWHC 185 (Ch)). Although the case does not break new ground, it provides a useful review…
Gemcitabine is part of the family of nucleosides which are compounds constituted of two chemical parts: a sugar bound to a nucleobase through a glycosidic bond. As any nucleoside can have two isomers (the alpha-anomer and the beta-anomer) depending on the orientation in space of the glycosidic bond, it must be clarified that Gemcitabine is…
This is to report on a new tendency in the jurisdiction of the Federal Patent Court to use the prerequisite of enabling disclosure (Art. 83 EPC) as an unpredictable rule of reason for patentability. Based on a Federal Supreme Court decision of 2001 (“Taxol”), it had been established case law in Germany that a patentee…
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 patent concerned claims a method of cooling animals characterized in that the animals are cooled in a milking stall so that the animals go to the milking stall spontaneously. The patentee added a disclaimer of therapeutic use. The claim covered only carrying out the invention on animals that are neither in a pathological state…
In this case the Court held that a previous patent application and other scientific publications which did not disclose the invention in a manner sufficiently complete for it to be carried out by a person skilled in the art, could not influence the novelty of the invention for which that patent application was later filed….
Do we need a Community Patent? Do we need a European Patent Litigation System? Or does the current fragmented system have a hidden wisdom behind it? Judge for yourself!
