Validity

In most systems, a patent is valid for 20 years from the filing date of the patent application. Patents are granted with a presumption of validity but no patent is safe from being challenged and declared (partially) invalid by national courts or, in the case of European patents, revoked by the European Patent Office. Often, a claim of invalidity of a patent is a reaction to an action of the patentee, in particular an infringement action.

EPC, Inventive step, Validity

(Hoffmann Eitle)/

In view of the principles outlined in the recent decision T 777/08 it has to be expected that in the future the inventiveness of a novel polymorph form of a pharmaceutically active compound will be acknowledged only if the novel polymorph form is associated with an unexpected pharmaceutical activity, while improved physical and/or physicochemical properties would not be sufficient. Also, an inventive step might be acknowledged if an inventive activity is required to actually manufacture the polymorph.

Case Law, Exceptions to patentability, Germany, Validity

(Krieger Mes Graf & v. der Groeben)/

The Court of Appeal discusses and builds on its previous case law on patentability regarding the issue of whether the subject matter is considered a technical invention. The Court emphasizes that it is sufficient if only part of the patented teaching concerns a technical problem. However,  as the next step it has to be determined…

(Indirect) infringement, Biologics, Inventive step, Netherlands, Novelty, Opposition, Procedure, Revocation, Scope of protection, Validity

(Brinkhof)/

To stay, or not to stay, that is the question. But not in the recent Danisco v. Novozymes case before the District Court of The Hague. On the face of the Court’s decision of 22 June 2011, the question whether to stay the national proceedings pending the outcome of opposition proceedings at the EPO on…

Germany, SPC, Validity

(Hoffmann Eitle)/

In this blog, we reported earlier about a new nullity action initiated in 2010 against the German supplementary protection certificate (SPC) for enantiomeric escitalopram and the judgment of the German Federal Patent Court (Bundespatentgericht – BPatG) in favor of the validity of the SPC. Meanwhile, the BPatG issued the written grounds for its decision.

Biologics, Chemical Engineering, EPC, Extent of Protection, France, Procedure, Validity

(Véron & Associés)/

Since 2009, French law has allowed patentees to voluntarily limit their granted patent claims. This possibility, which has existed for a long time in a number of European countries, (e.g. Austria, Switzerland, Germany, Denmark, Italy, Norway and the United Kingdom) has recently been introduced into the European patent system through Art. 105bis et seq. of the…

Austria, Case Law, SPC, Validity

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If a supplementary protection certificate (SPC) should have been denied (or granted with limited scope), because the six month application period following the date of first marketing approval has lapsed, it is entirely or partially void. There is a lack of legal interest for a negative declaratory action directed at declaring the non-existence of claims…

Germany, Inventive step, Mechanical Engineering, Novelty, Validity

(Hoffmann Eitle)/

The Federal Court of Justice (FCJ) in Germany has held in its recent “Dentalgerätesatz” decision that claim 1 of EP 892 625 is novel since it claimed a new functional adaptation of otherwise known elements to serve a certain purpose. In doing so, the FCJ reversed the first-instance decision of the Federal Patent Court.

Chemical Engineering, Germany, Sufficiency of disclosure, Validity

(Rospatt Osten Pross)/

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…

Added matter, Denmark, EPC, European Union, Extension of subject matter, Injunction, Inventive step, Novelty, Revocation, Validity

(Bugge Valentin)/

In Denmark, a patentee may opt to apply for a utility model registration in addition to a patent, provided that the conditions for the grant of both rights are fulfilled. One of the strategic advantages of applying for both rights in Denmark is that the utility model registration is not subject to as thorough a…

Biologics, Chemical Engineering, France, Procedure, Revocation, Validity

(Véron & Associés)/

Who may bring an action for patent revocation? Such is the fundamental question which has been submitted to the Tribunal de Grande Instance of Paris in a case whose factual circumstances made it very interesting. On 13 September 2010, Omnipharm Limited served a summons on Merial to appear before the Tribunal de Grande Instance of Paris to…