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.
There have not been many decisions in 2010 from the English Patents Court that are likely to be regarded in future decades as seminal judgments. However, in the author’s view, the judgment of the Court of Appeal of 28 July 2010 in Schlumberger Holdings Limited v Electromagnetic Geoservices AS is likely to be cited frequently…
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.
In a case involving the US multinational Mars and an Italian producer of rice (Riseria Monferrato), the Court of Appeal of Turin, by decision of 19 November 2008, tackled – one of the few cases in Italian case law – the interesting issue of the difference between discoveries and inventions and their patentability. The case…
This matter concerns levocetirizine, which is an enantiomer of cetirizine. The Court held that, at the priority date, it would have been obvious to the skilled person to check whether levocetirizine (which had been individually disclosed before the priority date) had improved pharmacological characteristics compared to the racemic mixture (i.e. cetirizine). As a rule, resolving…
Separating and testing the two enantiomers of a chiral molecule having an already-known therapeutic effect in order to identify the active enantiomer, evaluating its specific therapeutic effect and finally recommending, through the patent, its use for an identical but better-quality therapeutic effect, involves no inventive step.
By decision no. 6967/2009 of 14 May 2009, the IP Chamber of the Court of Milan found for the invalidity of a patent claiming the second medical use of a known pharmaceutical product for lack of inventive step. This decision is remarkable for at least two reasons. Firstly, the Court departed from the findings of…
On the basis of a use patent, Aventis filed for interim relief against Hospira at the Bailiff’s Court (Enforcement court) at Lyngby City Court in Denmark. The claim was based on DK/EP 0593656 and the defence raised by Hospira was invalidity of the invoked right.
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 English Court of Appeal dismissed Novartis’ appeal against the finding of the Patents Court that Novartis’ patent for a sustained release formulation of fluvastatin was invalid for obviousness. The case was unusual because, at first instance, Warren J. had held the patent to be inventive on a conventional analysis but then went on to find it obvious using an acontextual approach. The Court of Appeal discussed the correct approach to the question of obviousness in English law, by reference to both the problem and solution approach developed by the European Patent Office and the established four-step approach developed by the English Courts in Windsurfing v Tabur Marine and Pozzoli v BDMO .
This case relates to the opposition against Amazon’s famous ‘one-click’ patent. The Board ruled that what is required for obtaining patent protection for a software-implemented business method is that the software should contribute to a technical effect which goes beyond the mere implementation of the business method itself. The Board held that although computer-implemented business…
