The board refused to find a set of claims filed with the grounds of appeal admissible, because it concluded from the circumstances that the proprietor had deliberately refused to file these claims during first instance proceedings. The intention of Article 12(4) of the rules of procedure of the EPO boards of appeal was found by…
Hungarian Supreme Court’s decision on conditions for granting supplementary protection certificates (SPC) under the transitional provisions of the Accession Treaty. The Supreme Court held that the first marketing authorization for the pharmaceutical product granted in any EU Member State (including the entire territory of the EU as enlarged due to the 2004 accessions, not restricted…
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.
The Commercial Court of Granada has just handed down a Decision dated 6 July 2011 which, as far as the author is aware, has admitted for the first time a post-grant claim limitation under article 138.3 of the European Patent Convention (EPC 2000) in Spain. The Decision has been made in the context of an…
The Swiss Federal Supreme Court held in a recent decision that the Swiss company Teva Pharma AG had to bear the court costs and reimburse Novartis’s attorneys’ fees in preliminary injunction proceedings because of Teva’s contradictory conduct in this case. The decision was based on the following facts: On March 16, 2010, Teva was granted…
Combination products (containing two or more active ingredients) raise difficult questions with respect to supplementary protection certificates (SPCs). Can a SPC be based on the market authorisation (MA) of a combination product, if the patent only covers one active ingredient? On 13 July 2011, the Advocate General at the CJEU delivered her Opinion on the…
On 4 July 2011, the Civil Chamber of the Supreme Court published a judgment dated 10 May 2011 approved en banc (i.e. by the full Court) shedding light on two important points: (i) the scope of the doctrine of equivalents; and (ii) the effect of articles 27.1 and 70 of TRIPS on the effects of…
In the recent case of Cephalon v Orchid [2011] EWHC 1591, the UK Court held that three patents relating to the drug modafinil, used to treat sleep disorders such as narcolepsy, were not infringed and were invalid for obviousness. Previously in this case the court had refused to grant an interim injunction despite the failure…
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…
During EPO opposition proceedings, patentees have historically been able to avoid discussing clarity by combining granted claims rather than using the description as basis for amendments. The landmark cases T 227/88 and especially T 367/96 have been relied on to support this position. However, some technical boards of appeal are now starting to engage in…
