Added matter, Amendments, Disclaimer, EPC, Extension of subject matter

(Hoffmann Eitle)/

On August 30, 2011 the Enlarged Board of Appeal rendered its decision on the admissibility of a disclaimer whose subject-matter is disclosed as an embodiment of the invention in the application as filed. It can be expected that the EPO will change its current restrictive practice in view of this decision, again allowing disclaimers for disclosed subject-matter under certain conditions. However, the Enlarged Board of Appeal did not endorse the view that disclaiming disclosed subject-matter is always allowable. Hence, until further Board of Appeal decisions will bring more clarity as to the specific situations in which such disclaimers are allowable, there will remain a degree of uncertainty.

Case Law, EPC, Inventive step, Public prior use

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The opponent relied on a document that was distributed in a meeting arranged by himself. The Board of Appeal held that in the present case, it did not share the view of the patentee that it was impossible for him to prove non-distribution and that therefore the burden of proof was with the opponent. In…

Case Law, EPC, Procedure

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The Opposition Division upheld a patent in a decision finding novelty over D1 and inventive step over D1 in combination with D3 or D4. The opponent filed a statement of grounds of appeal containing a new prior art document D5 and argued lack of novelty over D5 or lack of inventive step over the combination…

Case Law, Germany, Procedure

(Krieger Mes Graf & v. der Groeben)/

This decision deals with the scope of the obligation of a plaintiff to concentrate actions in one case if these are directed against the same defendant regarding the same infringing device, but based on different patents and to what extent the plaintiff may choose to use a patent at a later stage. A later action…

Case Law, Extent of Protection, Germany

(Krieger Mes Graf & v. der Groeben)/

In case of actual or potential discrepancies between claim language and the patent description which might allow a broader interpretation the Supreme Court confirms that the claim may not be interpreted to cover all options of the broader description if certain elements of the description have not been reflected in the claim language. Furthermore, such…

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.

Germany, Procedure
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In a recent decision of 16 June 2011 the German Bundesgerichtshof has cancelled a decision of the German Bundespatentgericht because the Bundespatentgericht had not sufficiently respected the (constitutional) right of one of the parties to a fair hear-ing (“Verletzung des rechtlichen Gehörs”). At the Bundespatentgericht the parties had discussed the validity of a German utility…

European Union, Italy

(Trevisan & Cuonzo)/

Italy has recently filed a complaint with the Court of Justice against Council’s decision of 10 March 2011 no. 167 authorising enhanced cooperation under Art. 20 TEU in the area of the creation of unitary patent protection. Spain had already filed one a few weeks before. As is known, negotiations between the Member States on…

(Cross-border) jurisdiction, Injunction, Netherlands

(Brinkhof)/

In its 2006 decision in the matter called GAT/LuK the ECJ held that Article 22-4 of the Brussels Regulation – which provides for exclusive national jurisdiction regarding the validity of patents and other registered rights – applies to all proceedings relating to the validity of a patent, irrespective of whether the issue is raised by…