Response by Association of the Members of the Boards of Appeal of the European Patent Office (AMBA) to letters by EPLAW, CCBE and epi concerning the proposal for the institutional reform of the Boards of Appeal of the European Patent Office
"The Association of the Members of the Boards of Appeal of the European Patent Office (AMBA) has noted with great interest your letters dated 4 June 2015 (EPLAW) / 15 May 2015 (CCBE) / 25 June 2015 (epi) concerning the proposal for the institutional reform of the Boards of Appeal of the European Patent Office as set out in CA/16/15.
"The institutional reform of the BoA, as a pivotal part of the European patent system, is an important and delicate undertaking. It must correctly balance many legal aspects as well as improve the perception of independence of the BoA as a final instance judicial body (for refusals and revocations)."
In Spain, jurisdiction over civil patent disputes in the first instance is exclusively held by the so-called Commercial Courts (Juzgados de lo Mercantil). These Courts, which have been in operation since 1 September 2004, were actually instituted on the occasion of a comprehensive reform undertaken the previous year on the former insolvency law, by assigning to these newly-created Courts exclusive competence on whatever legal issues that could arise in relation to insolvency and bankruptcy matters.
However, in addition to the above, it was decided to also give exclusive competence to Commercial Courts regarding several other fields of law, namely in the area of transport, maritime law, the general terms and conditions of contracting, mortgage registry entries, antitrust law, unfair competition, advertising, copyright and industrial property (and, consequently, patent disputes). Thus, for our purposes, the result was that patent litigation cases in Spain are now heard in the first instance by Courts which actually are only “semi-specialized” in this area of law.
H.Lundbeck A/S, Lundbeck España, S.A. v. Laboratorios Cinfa, S.A., Mylan Pharmaceuticals, S.L., Actavis Spain, SA. et al., Supreme Court (Civil Chamber, 1st Section), Spain, 29 April 2015, Docket No. 556/2013.
By means of a Judgment issued on 29 April 2015, the Supreme Court definitively ruled in the Escitalopram patent litigation brought by Lundbeck in Spain against a pool of generics companies, thereby confirming the earlier findings from the lower courts, which had declared the non-existence of patent infringement.
The Judgment contains important teachings concerning the assessment of patent infringement under the doctrine of equivalents and the applicable standard of obviousness for the alternative which replaces an element of the invention, which the Supreme Court sets in the predictability of the variant. It further analyses the inapplicability of the test of inventive step to appraise the obviousness of the allegedly equivalent alternative.
EPLAW comments to the Public Consultation on the Rules on Court fees and Recoverable costs of UPC
Further to the public consultation on the proposed Rules of procedure regarding court fees and recoverable costs under the UPC Agreement, the EPLAW Board in consultation with a working group of EPLAW members from various nationalities prepared comments which were sent to the Preparatory Committee on 29 July 2015.
Smith & Nephew plc v ConvaTec Technologies Inc., England and Wales Court of Appeal (Kitchin, Briggs, Christopher Clarke LJJ), London UK, 30 July 2015, Neutral Citation Number:  EWCA Civ 803
The Court of Appeal has stayed both an injunction and an order for delivery up or destruction pending the outcome of two decisions in relation to European Patent (UK) 1,343,510 (the “Patent”), firstly Smith & Nephew’s application for permission to appeal to the Supreme Court and, secondly, an EPO opposition.
ConvaTec’s Patent covers a process for the silverisation of fibres in wound dressings. The Patent has been the subject of a series of decisions, initially in relation to validity (as reported on this Blog here and here) and subsequently in relation to infringement, including an application for a declaration of non-infringement (as reported here and here). The Court of Appeal decision on infringement overturned Birss J’s judgment as to the scope of a numerical range in the relevant claim of the Patent and concluded that Smith & Nephew infringed the Patent. The resulting form of order could not be agreed by the parties and an application was made to determine various issues, including permission to appeal and a stay of the injunctive relief.
Coloplast A/S v. Medical4you B.V., District Court The Hague, preliminary injunction proceedings, The Netherlands, 14 August 2015, Case No. C/09/480452 / KG ZA 15-9
Catheters. The judge in preliminary injunction proceedings deviates from a recent decision by the Opposition Division. According to the judge there is a serious, non negligible chance that the patent will be revoked in proceedings on the merits or in appeal proceedings at the EPO because of lack of inventive step. The patent lacks inventive step regardless of the fact that two consecutive steps are needed in order to come to the claimed invention.
Rovi Guides, Inc. v Virgin Media Limited & Ors., England and Wales Court of Appeal (Longmore, Lewison, Floyd LJJ), London UK, 14 July 2015, Neutral Citation Number:  EWCA Civ 781
The Court of Appeal has affirmed the decision of Mr John Baldwin QC, sitting as a deputy judge of the Patents Court, to revoke Rovi’s patent which describes and claims features which allow a user to pause live television or video on demand (“live feed”) and resume watching it on a different device (a process known as “relocation”). At first instance, the patent had been held to be obvious over a single piece of prior art, the Digital Audio-Visual Council 1.3.1 Specification (DAVIC). Rovi appealed the decision in relation to the live feed relocation claims (the “live feed claims”), but not the video on demand relocation claims.
Teva UK Ltd & Teva Pharmaceutical Industries Ltd v LEO Pharma A/s, England and Wales Court of Appeal (Sir Robin Jacob, Kitchin and King LJJ), London, UK, 28 July 2015, Neutral Citation Number:  EWCA Civ 779
This is an appeal against Birss J’s finding that two LEO patents were invalid for lack of inventive step. The key claims of the patents were for a combination of the active pharmaceutical ingredients calcipotriol and betamethasone, alongside the non-aqueous solvent Arlamol E. The patents cover Leo’s Dovobet Ointment product, a dermal treatment for psoriasis.
The Court of Appeal held that Birss J had erred in his application of the law on the assessment of inventive step, thereby allowing the Court of Appeal to revisit the assessment de novo. It is worth noting that in the absence of an error of principle, the English appellate Courts will be very cautious in differing from the first instance judge’s evaluation of the question of inventive step as it is considered a kind of jury question (see the House of Lords judgment in Biogen v Medeva at paragraph 54). Sir Robin Jacob (with whom Kitchin and King LJJ agreed) returned to the bench for this appeal and delivered the leading judgment.
Wobben Properties GmbH v. Siemens plc & Ors, UK, High Court (Patents Court), Birss J, 20 July 2015, Neutral Citation Number:  EWHC 2114 (Pat)
Wobben’s patent in suit concerned a method of operating a pitch-controlled wind turbine. The inventive concept of the claimed invention was to allow operation of wind turbines at wind speeds above the ordinary shut down wind speed (the speed at which a wind turbine is otherwise compulsorily shut down in high winds) so as to extend the operating window and potentially increase power yield as well as network compatibility. This continued operation involved progressively reducing the power and rotor speed of the turbine as the wind speed increased. The patent was held to be invalid for lack of inventive step over one of the cited pieces of prior art, and even if valid would not have been infringed by the defendants’ wind turbines.
Unwired Planet International Limited v Huawei Technologies Co. Limited et al, High Court of Justice, Patents Court, London, UK, 21 July 2015, Case No.  EWHC 2097 (Pat)
This is an interim judgment in the ongoing dispute between Unwired Planet, Huawei and Samsung relating to various patents which are declared to be standard essential (SEPs) and which were acquired by Unwired Planet from Ericsson. In this interim judgment, Birss J struck out arguments brought by Samsung that Ericsson had breached Article 101 TFEU by not ensuring the transfer of an effective FRAND obligation to Unwired Planet in relation to these patents. However, he allowed arguments relating to other alleged breaches of Article 101 to proceed to trial, on the basis that they might have a real prospect of success.
Samsung contended that Ericsson and Unwired Planet had breached Article 101 TFEU in three ways. First, there was a failure to ensure the complete, proper and effective transfer of an enforceable FRAND obligation. Second, by dividing Ericsson’s patent portfolio into two parts (some staying with Ericsson, the rest being transferred to Unwired Planet) in the way that it did, a breach of competition law had taken place in that unfair higher royalties would be earned and competition would be restricted or distorted. Third, certain terms in the sale agreement between Ericsson and Unwired Planet were infringements of Article 101.
- Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) and the full transcript of the Trier public hearing (26 November 2014): (direct link) A version of this booklet incorporating the 18th draft of the Rules of Procedure of the Unified Patent Court will be available when this draft is approved and published by the Preparatory Committee, hopefully in September 2015.
The full transcript of the Trier public hearing (26 November 2014) is also available as a separate document here.
Resolution Chemicals Limited v. Astrazeneca B.V. and Shionogi Seiyaku Kabushiki Kaisha, District Court The Hague, 15 July 2015, Case No. HA ZA 14-738, now including a translation in English and an extended head note with thanks to Mark van Gardingen and Jan Pot, Brinkhof
Shionogi holds supplementary protection certificate (SPC) 300125 for ‘Rosuvastatinum, if desired in the form of a non-toxic pharmaceutically acceptable salt, in particular the calcium salt’. AstraZeneca is the exclusive licensee for this SPC. The basic patent for the SPC was EP 0 521 471 (“EP 471”), which had expired in 2012. Claim 1 of EP 471 was for “the compound [rosuvastatin, described using its molecular formula] acid or a non-toxic pharmaceutically acceptable salt thereof.”
Resolution Chemicals requested the Court to partly nullify the SPC, namely insofar as it extended to more than the calcium and sodium salt of rosuvastatin, and to grant a declaration of non-infringement in relation to its rosuvastatin zinc salt. The case is somewhat unusual in that Resolution Chemicals attacked the validity and scope of protection of the basic patent after its expiration in order to limit (the scope of protection of) the SPC.
[X] (natural person, anonymized) and Jet Set Hydrotechniek B.V. v. Hoffland B.V. and [Y] (natural person, anonymized), also doing business under the name Brielle Industrie Services, District Court of The Hague, the Netherlands, 3 June 2015, Case number 444144 / HA ZA 13-638
[X] holds a patent for a system and method for cutting steel plates (EP '630). Jet Set trades in cutting devices developed by [X] under the name RAGWORM. Hoffland offers demolition services, inter alia with respect to oil storage tanks, while Brielle Industrie Services as a one-man-business offers cleaning services for tanks, as well as cutting services for tanks by means of water under high pressure.
In April 2013, the parties concluded a settlement agreement, in which it is inter alia set out that Brielle Industrie Services acknowledges infringement of EP '630 and undertakes to refrain from (further) infringement of EP '630, unless if it were ruled by a court that EP '630 is invalid in a judgment that has become final (no longer open to appeal).
World Wide Technical Services N.V. v. Panasonic Marketing Europe GmbH and Panasonic Manufacturing UK Ltd., District Court of The Hague, the Netherlands, 15 July 2012, Case number 460236 / HA ZA 14-228
WWTS holds a method-patent (EP '882) for connecting a computer, a server, a computer program product and a system, which technology is implemented into WWTS's IQonn software. WWTS had licensed its IQonn Software to Panasonic via a third party, Diginext, which has since been declared bankrupt. After an update, parties disagreed on the scope of the license. Panasonic was under the impression that the paid license fee was meant for version 3 and 4, while WWTS claimed that Panasonic should pay a separate license fee for version 4. Additionally, WWTS accused Panasonic of infringing its patent and copyrights by selling Toughbook laptops with version 4 of the IQonn Software, without having a license to do so.
VPG Systems UK Limited v Air-Weigh Europe Limited, UK, High Court (Intellectual Property Enterprise Court), HHJ Hacon, 1 July 2015
On 1 July, HHJ Hacon ruled that the patent in suit was invalid for lack of inventive step. The relatively short judgment is of interest as it records the judge’s exposition of the English approach to answering the statutory question of what is obvious under the established Windsurfing/Pozzoli analysis generally adopted by the English courts.
Although many readers will be familiar with the four-step Windsurfing/Pozzoli approach to the obviousness question, it is worth setting out the steps:
(1a) Identify the notional “person skilled in the art” (1b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
In relation to the second step, HHJ Hacon noted that the inventive concept is not the same as the inventive step.
Huawei Technologies Co. Ltd v. ZTE Corp. and ZTE Deutschland GmbH, CJEU 16 July 2015, C‑170/13
On those grounds, the Court (Fifth Chamber) hereby rules:
1. Article 102 TFEU must be interpreted as meaning that the proprietor of a patent essential to a standard established by a standardisation body, which has given an irrevocable undertaking to that body to grant a licence to third parties on fair, reasonable and non-discriminatory (‘FRAND’) terms, does not abuse its dominant position, within the meaning of that article, by bringing an action for infringement seeking an injunction prohibiting the infringement of its patent or seeking the recall of products for the manufacture of which that patent has been used, as long as:
– prior to bringing that action, the proprietor has, first, alerted the alleged infringer of the infringement complained about by designating that patent and specifying the way in which it has been infringed, and, secondly, after the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, presented to that infringer a specific, written offer for a licence on such terms, specifying, in particular, the royalty and the way in which it is to be calculated, and
– where the alleged infringer continues to use the patent in question, the alleged infringer has not diligently responded to that offer, in accordance with recognised commercial practices in the field and in good faith, this being a matter which must be established on the basis of objective factors and which implies, in particular, that there are no delaying tactics.
2. Article 102 TFEU must be interpreted as not prohibiting, in circumstances such as those in the main proceedings, an undertaking in a dominant position and holding a patent essential to a standard established by a standardisation body, which has given an undertaking to the standardisation body to grant licences for that patent on FRAND terms, from bringing an action for infringement against the alleged infringer of its patent and seeking the rendering of accounts in relation to past acts of use of that patent or an award of damages in respect of those acts of use.
New Business Distribution Schemes reveal an alarming loss of Board members
The new Business Distribution Schemes for the Boards of Appeal for the second half of 2015 have been published on the EPO’s website, following the re-appointment of members in the Administrative Council’s meeting in the preceding week. The schemes show the following vacancies:
Chairmen Technical Boards of Appeal: 3 of 28 available posts Technically qualified members: 8 of 111 available posts Legally qualified members: 7 of 33 available posts
This means an overall vacancy rate of over 10%, and a vacancy rate for legally qualified members of over 20%. Such vacancies are without precedent in the past and result from the fact that the President of the EPO has not made use of his right to propose appointments of new Board members to the Administrative Council since the Enlarged Board of Appeal rendered its decision R 19/12 of April 25, 2014 (see post dated 05/05/2014).
Comments in the blogs report that the selection and appointment proceedings pending at the time were stopped and no new selection proceedings were allowed to start and that even the re-appointments were delayed, sometimes until the last minute. In addition, no requests for prolongation of service of Board members from 65 years to 68 years, as foreseen in the Service Regulations, were allowed.
AstraZeneca AB and Another v KRKA dd Novo Mesto and Another, England and Wales Court of Appeal (Longmore, Kitchin and Floyd LJJ), London, UK, 21 May 2015, Neutral Citation Number:  EWCA Civ 484
In order to obtain a preliminary injunction against Krka, AstraZeneca had given a cross-undertaking in damages. When the injunction was lifted by consent, damages became due to Krka. In this case, the Court of Appeal of England and Wales affirmed the judgment of Sales J (as he then was) in determining the quantum of those damages.
Broadly the Court of Appeal applied the principles set out in prior case law for determining quantum of liability. The application of the legal standards in this case was not without difficulty because of the very complicated factual circumstances at issue. This judgment has provided guidance for how the amount of loss should be calculated when the assessment is necessarily speculative, and about highly complex features of a market.
Synthon v Teva, London, UK, 21 May 2015,  EWCH 1395 (Pat) Birss J
In his judgment of 21 May 2015, Birss J upheld the validity a number of claims of EP’528 and EP’924, both owned by Teva and relating to glatiramer acetate (“GA”). This was so notwithstanding that the Dutch designations of the same patents had previously been revoked (albeit with some differences in the evidence taken into account). Three of the claims of EP’924 were, however, found to be invalid for added matter.
GA is a mixture of synthetic polypeptides made of four amino acids, a low molecular weight fraction of which is sold by Teva (brand name Copaxone) for the treatment of relapsing remitting multiple sclerosis.
EP’528 and EP’924, both being divisionals and differing of note only in relation to their claims, relate to improvements in the process for making GA, namely those resulting in low levels of free bromine and metal ion impurities. The claims in issue were mostly process claims for making GA or its intermediate (TFA-GA) and claims to the GA product itself (claims 22-26 of EP’924).
Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) (direct link here)
(A version of this booklet incorporating the full transcript of the Public Oral Hearing on the 17th draft of the Rules of Procedure of the Unified Patent Court held in Trier on 26 November 2014 will be available shortly.)
- The two judgments handed down on 5 May 2015 by the CJEU dismissing Spain’s actions against the EU regulations on the unitary patent protection:
Case C146/13 concerning Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection DE, EN, FR
Case C147/13 concerning Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements DE, EN, FR
Consultation Document on the Rules on Court fees and recoverable costs launched on 8 May 2015 by the Preparatory Committee Unified Patent Court (direct link here).
From the EPLAW President's letter dated 4 June, 2015:
"EPLAW is pleased to see that the Administrative Committee (AC) and the EPO are actively engaged in furthering the independence of the BoA.
"We note that in the meantime the Council of Bars and Law Societies of Europe (CCBE) in its letter to Mr. Jesper Kongstad of the AC of 15 May 2015 (copy enclosed) has provided various detailed comments to the Proposal. EPLAW is in full agreement with these comments which, given their general and fundamental nature, lend themselves to be addressed to the EPO as well.
"Two aspects of the Proposal cause most concern to EPLAW."
Stretchline Intellectual Properties Ltd vs H & M Hennes & Mauritz UK Ltd, Court of Appeal, UK, 22 May 2015
This decision was a decision of the Court of Appeal, upholding an earlier decision by Mr Justice Sales regarding the extent to which a settlement agreement compromising patent proceedings between two parties pre-empted the parties from raising invalidity arguments in subsequent proceedings.
In July 2009, Stretchline initiated proceedings against H & M alleging that various brassieres H & M was selling through its stores infringed Strechline’s patent GB 2,309,038 and a corresponding US patent which related to providing a penetration barrier which prevented under wires in bras from penetrating the tubes which encase them. A mediation took place in May 2011 and the parties entered into a global settlement agreement settling the dispute between the parties with H & M agreeing to stop selling the disputed brassieres and agreeing to drop their allegations that the patents were invalid.
The New European Patent, by Alfredo Ilardi, Hart Publishing, May 2015
Now available with a discount for EPLAW Patent Blog readers (read below the line for the details)
"On 17 December 2012, following a complex negotiation which lasted 12 years, the European Parliament adopted Regulations (EU) 1257/2012 and 1260/2012 and the text of the Agreement on a Unified Patent Court (UPC Agreement). These instruments institute the ‘European patent with unitary effect’, the first unified system for the protection of inventions within the European Union. The two Regulations will be applicable after the entry into force of the UPC Agreement, which was signed on 19 February 2013 by 24 Member States of the European Union.
"This book traces the evolution of the idea behind the institution of the European patent with unitary effect, including a comparative analysis of the existing parallel regional and international procedures for the protection of inventions. It presents a synthesis of the different phases of the negotiations which led to the adoption of the first unitary patent system within the European Union. In addition it examines the provisions of the two Regulations, of the UPC Agreement and of the jurisdictional system under Brussels I Regulation. Finally, it reproduces in the Appendix the texts of Regulations (EU) 1257 and 1260/2012 and of the UPC Agreement."
Alfredo Ilardi is former Head of the Collection of Laws and Treaties of the World Intellectual Property Organization.
Oberster Gerichtshof, Austria, 22 April 2015, Case No. 4 Ob 20/15t
In C-631/13 (Forsgren), the ECJ already ruled: Article 3(b) of Regulation No 469/2009 must be interpreted as precluding the grant of a supplementary protection certificate for an active ingredient whose effect does not fall within the therapeutic indications covered by the wording of the marketing authorisation.
Article 1(b) of Regulation No 469/2009 must be interpreted as meaning that a carrier protein conjugated with a polysaccharide antigen by means of a covalent binding may be categorised as an ‘active ingredient’ within the meaning of that provision only if it is established that it produces a pharmacological, immunological or metabolic action of its own which is covered by the therapeutic indications of the marketing authorisation.
Now, the Austrian Supreme court shed further light on the SPC-regulation when applying the ECJ’s judgement (Austrian Supreme Court, 4Ob20/15t).
AP Racing Limited v Alcon Components Limited, UK, High Court (Intellectual Property Enterprise Court), HHJ Hacon, 15 May 2015
HHJ Hacon’s judgment in AP Racing v Alcon Components concerned an application to strike out AP Racing’s statement of case under CPR Rule 3.4(2)(b) – ‘that the statement of case is an abuse of the court’s process or is otherwise likely to obstruct the just disposal of the proceedings’.
In a judgment of 28 January 2014, the Court of Appeal ruled that certain specific disc brake callipers for cars produced by Alcon had infringed AP Racing’s UK Patent (No. 2 451 690) and that AP Racing was entitled to choose between an account of profits or an inquiry as to damages. Following the finding of infringement AP Racing sought disclosure to enable AP Racing to make its election between the two remedies.
In doing so AP Racing asked for disclosure both for sales of brake callipers which had been the subject of the decision on infringement and other brake callipers sold by Alcon. Alcon objected. AP Racing responded by dropping its request for disclosure beyond the callipers which had been the subject of the infringement decision and then brought a separate infringement claim against Alcon in respect of the other callipers. Alcon applied for this new case to be struck out.
IPCom Gmbh & Co Kg v HTC Europe Co. Ltd & others, UK, High Court (Patents Court), Birss J, 24 April 2105
Birss J’s decision in IP Com v HTC is the latest decision in the on-going dispute between IPCom, Nokia and HTC. Previously Nokia and IPCom had been involved in litigation involving EP 1 186 189, a patent which Floyd J (as he then was) found to be invalid ( EWHC 3482 (Pat)), a decision which was upheld on appeal ( EWCA Civ 6).
The present case concerned EP 1 841 268 which was based on a divisional application of the EP’189 patent previously litigated by Nokia and IPCom. In 2011, this divisional patent EP’268 was found by Floyd J to be valid in an amended form and infringed ( EWHC 1470 (Pat)), another judgement which was upheld on appeal ( EWCA Civ 567).
Unwired Planet International Limited v Huawei Technologies Co. Limited, Samsung Electonics Co. Limited, Google Inc and others, UK, High Court (Patents Court), Birss J, 24 April 2015
Unwired Planet has sued Huawei, Samsung and Google in the UK Patent’s Court, alleging that the defendants have infringed five patents said by Unwired Planet to be essential to 2G, 3G and 4G standards, and a further patent that is not alleged to be essential to any standard. As well as traditional infringement and validity issues, the dispute raised complex questions of competition law. The case has been divided up into five “technical” trials, due to take place between October 2015 and June 2016, and one “non-technical” trial due to start in October 2016. The latter will consider matters of FRAND licensing, competition law, obligations under the ETSI IPR Policy and whether injunctions may be granted, and is now scheduled to last for 13 weeks.
The Unitary Patent Package is consistent with European Union Law – Spanish appeals rejected, by Wouter Pors, Bird & Bird The Hague
Introduction On 5 May 2015 the Court of Justice of the European Union rejected the appeals filed by Spain against the Unitary Patent Package. This is a landmark decision, clearing the way for more effective protection of innovation in Europe and at the same time resolving some interesting highly political issues of Union law.
EPO starts consultation on the President’s proposals for a structural reform of the Boards of Appeal
Decision R 19/12 of April 25, 2014 of the Enlarged Board of Appeal (see post dated 05/05/2014 here) prompted the Administrative Council of the EPO to discuss possible consequences for the autonomy of the Boards of Appeal. In December 2014, the temporary removal of a member of the Boards of Appeal by the President of the EPO aggravated the problem. It raised serious concerns among judges and practitioners in respect of the fundamental principle of separation of powers safeguarding the independence of courts (see posts dated 8/12/2014 here and 11/12/2014 here).
In its meeting of March 27, 2015, the Council had an exchange of views on a proposal submitted by the President entitled “Structural reform of the EPO Boards of Appeal” (doc. CA/16/15). The Council gave its general support to the policy lines as presented. First concrete proposals are envisaged for decision at the next Council meeting, in June 2015. It was agreed in the Council that these should take due account of contributions received as a result of a broad consultation of stakeholders.
Everseal Stationery Products Ltd v Document Management Solutions Ltd and others, Intellectual Property Enterprise Court, 1 April 2015,  EWHC 842 (IPEC), HHJ Hacon
The Intellectual Property Enterprise Court (IPEC) has found a patent for a “mailer” (a business form, letter etc which, after completion, is folded and then sealed around the edges) to be invalid for lack of novelty and obviousness. The judge, HHJ Hacon, held that the patent was anticipated by prior use of a third party’s mailer, and it lacked inventive step over each of two US patents cited as prior art.
He held that if the patent were valid it would be infringed by one of the first defendant’s mailers (no longer supplied) but not by the two other mailers (Mailers 2 and 3). Other defendants, officers of the first defendant, were alleged to be jointly liable for the first defendant’s infringements but the parties had elected that the issue of joint tortfeasance would be heard at the damages hearing if the judge’s findings were reversed on appeal.
Mr. Arne Forsgren v. Spanish Patents and Trademarks Office, High Court of Justice (Contentious-Administrative Chamber - 2nd Section) of Madrid, Spain, 9 July 2014, Docket No. 945/2012.
The wave of resolutions from the European Court of Justice (ECJ) concerning SPCs and the related interpretation of the provisions from the Regulation (EC) No. 469/2009 (hereinafter, “the Regulation”) recently brought the ECJ Judgment of 15 January 2015, in case C 631/13 (Arne Forsgren v. Österreichisches Patentamt), in reply to the request for a preliminary ruling submitted by the Austrian Supreme Patent and Trade Mark Adjudication Tribunal (Oberster Patent- und Markensenat) which concerned the request for grant of a SPC for Protein D present in the ‘Synflorix’ pneumococcal vaccine.
Before the rendering of the Judgment above, the High Court of Justice of Madrid had to decide upon the appeal filed by Arne Forsgren against the decision by the Spanish Patent Office (“SPTO”) not to grant an SPC for Protein D on the basis of the marketing authorization for ‘Synflorix’. It did so by means of a Decision dated 9 July 2014, where, accepting the patentee’s arguments, it revoked the previous rejecting resolution, and hence ordered to grant the requested SPC.
Saint-Gobain v. Knauf Insulation, Belgian Supreme Court, 12 March 2015
Patent - Scope of protection - Theory of equivalents - Amendment of the patent application - Interpretation of the granted claim - Impact of amendment on the scope of protection
A judgment deciding that the patent is not infringed, taking into account that the patent application as initially filed has been amended and that in its final version, the amended claim includes a feature which is missing in the challenged product, is consistent with Article 26 of the Belgian Patent Act (defining the scope of protection) and does not contradict the theory of equivalents.
In the present case, the judgment interpreting the amended claim of the patent as excluding from its scope products which do not exclusively contain glass fibers having a diameter of less than 8 microns, and deciding that the manufacturing of products containing glass fibers having a diameter greater than 8 microns in combination with glass fibers having a diameter less than this dimension is not a patent infringement, is legally justified.
The judgment of the Court of appeals was published on this blog here.
The Munich International Patent Law Conference entitled: "The Cost of Litigating Patents" shall be held on Friday, 19 June 2015 from 9 a.m. - 5 p.m. in Munich.
The conference will be held in English with no translation provided.Topics include: - The Cost of Litigating Patents, Part I: Germany, UK, US; - The Cost of Litigating Patents, Part II: Relevance of Cost for Patent Litigation; - The Cost of Litigating Patents, Part III: Calculation of Cost in Case Scenarios
Christoph Ann, Professor for Intellectual Property Law, Technische Universität München, Germany, - Winfried Bausback, Bavarian State Minister of Justice, Germany - Cornelia Rudloff-Schäffer, President, German Patent and Trade Mark Office - Matthias Zigann, Presiding Judge, Munich Regional Court I, Germany - The Rt Hon Sir Christopher Floyd, Lord Justice Court of Appeal, United Kingdom - James L. Robart, Federal Judge, U.S. District Court for the Western District of Washington, USA - Marie-Christine Courboulay, Vice President, Tribunal de Grande Instance de Paris, France - Türkay Alica, Judge, Civil Court of Intellectual and Industrial Property Rights Ankara, Turkey - Johannes Heselberger, Attorney-at-Law, European Patent Attorney, Bardehle Pagenberg, Germany
More information and registration details may be found here.
The much awaited twins, G 2/12 (Tomato II) and G 2/13 (Broccoli II) are out (one may read them here). The Enlarged Board of Appeal (EBoA) of the EPO has decided that patents for plants and plant material can be granted even if the process of production contains or consists of essentially biological steps.
Although the ruling was not unexpected, in view of the public interest, it is a comforting feeling for IP professionals to learn that Article 53(b) EPC (exclusion on the patentability of essentially biological processes for the production of plants) “does not have a negative effect on the allowability of a product claim directed to plants or plant material”.
The Academy of European Law (ERA), based in Trier, Germany, is organising a conference on “Litigation and Settlements in Patent Disputes”
The conference, which is to be held in Trier on 7-8 May 2015, aims to provide patent litigators and attorneys with practical guidance on how to make the best use of EU and international legal instruments in litigation and mediation/arbitration proceedings.
Key topics are:
Litigating before the Courts - Choice of courts and applicable law - Domestic and cross-border injunctions - Settlement of patent litigation and FRAND commitments - Case management before the Unitary Patent Court and before national Courts - Courts procedures over the EU - Validity of no challenge clauses
We have reported earlier about the new book Proceedings Before the European Patent Office. The post may be read here.
The publisher now kindly offers a 35% discount on the price (both hardback and paperback). In order to obtain the discount, readers may contact the publisher at: email@example.com and quote the discount code PTNR35.
Warner-Lambert LLC v (1) Actavis Group PTC EHF, (2) Actavis UK Ltd, (3) Caduceus Pharma Ltd v National Health Service Commissioning Board (Respondent) v (1) Teva UK Ltd, (2) Generics (UK) Ltd, (3) Dr Reddy’s Laboratories (UK) Ltd, (4) Consilient Health Ltd, (5) Sandoz Ltd, (6) Department of Health (Interested parties), Patents Court, 2 March 2015,  EWHC 485 (Pat), Arnold J
In a previous judgment (reported on EPLAW Patent Blog on 29 January 2015, which may be read here), the English Patents Court dismissed an application by Warner-Lambert for an interim injunction in respect of Actavis’ generic pregbalin. In this latest judgment, the Patents Court ordered a third party, the NHS Commissioning Board (“NHS England”), to issue guidance that pregbalin should be prescribed by reference to the brand name Lyrica® when prescribed for the patented indication (being neuropathic pain) and, when prescribed for non-patented indications, should be prescribed by reference to the generic name.
NHS England is to issue the guidance to the Clinical Commissioning Groups and the NHS Business Service Authority, those being the bodies responsible for providing such guidance to prescribing doctors and community pharmacies respectively.
Enlarged Board of Appeal EPO, G 2/ 12 and G 2/13, Tomatoes II and Broccoli II, 25 March 2015, with thanks to DX Thomas for alerting us to the decision
1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.
2. In particular, the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.
H.Lundbeck A/S, Lundbeck España, S.A. & Almirall, S.A. v. Synthon Hispania, S.L., Cantabria Pharma, S.L., Mylan Pharmaceuticals, S.L. et al., Court of Appeals (15th Section) of Barcelona, Spain, 22 October 2014, Docket No. 371/2013
TRIPS Agreement and patentability of pharmaceuticals in Spain: another turn of the screw.
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In a Decision rendered on 22 October 2014, the Court of Appeals of Barcelona confirmed the earlier Decision of Commercial Court no. 4 dismissing Lundbeck’s and Almirall’s (former’s licensee) actions for patent infringement against a large number of generics companies marketing in Spain Escitalopram generic drugs.
Enlarged Board of Appeal decision G 3/14, 24 March 2015, with thanks to DX Thomas, for sending in the decision
In considering whether, for the purpose of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
Sharp Kabushiki Kaisha (Appellant Applicant), Technical Board of Appeal 3.5.07, 18 July 2014, Case No. T 1214/09-3.5.07 "Information managing device/SHARP", by Stefan V. Steinbrener, Bardehle Pagenberg
Technical Board of Appeal 3.5.07 did not deny any contribution by the claimed arrangement to improved search and retrieval of stored images. However, in the Board’s judgment, the arrangement was not based on considerations other than those proper to the field of designing presentations of information for human viewing and hence was not an expression of any technical principle.
One of the more complex items on the non-exhaustive list of non-inventions set out in Article 52(2) EPC is the exclusion of presentations of information. Neither in the Convention nor in its preceding travaux préparatoires is any explanation given of what has to be understood by a “presentation of information”.
Nor is the existing case law of the Boards of Appeal consistent in this respect: while presentation of information is seen by some Boards (see e.g. decisions T 49/04-3.4.03 or T 1749/06-3.4.03) to only relate to the information contents, but not to its layout (only “what” is excluded, but not “how”), other Boards (see e.g. decisions T 1143/06-3.5.01 or T 1741/08-3.5.06) are much stricter and base their argument on whether or not the effect of data visualization, including both contents and layout, is only on the mind of the user, in particular by easing a mental evaluation or lowering a cognitive burden. In this case, a technical effect is denied, more or less irrespective of whether such evaluation step may occur in an otherwise technical environment.
Law professors petition against the Unitary Patent Package – but are the arguments correct? Wouter Pors, Bird & Bird The Hague
A petition called “The Union cannot be stripped of its powers by the Member States: the dangerous precedent of the patent package”, signed by more than 40 law professors, retired law professors and lawyers was published on the IPKat blog on Friday 13 March 2015 (the petition may be read here). The timing of this petition is remarkable. One would have expected such a petition to be published around the time when the Council Decision authorising enhanced cooperation in the area of the creation of unitary patent protection of 10 March 2011 (2011/167/EU) was published, or maybe early 2013, when both the Unitary Patent Regulation, the Regulation on Translation Arrangements and the Unified Patent Court Agreement (UPCA) had become available to the public. Instead, it is published in between the Advocate-General’s opinion on the Spanish appeals against the two Regulations and the expected judgment of the Court of Justice of the European Union on those appeals.
Proceedings before the European Patent Office, a Practical Guide to Success in Opposition and Appeal, by Marcus Müller and Cees Mulder
Edward Elgar Publishing recently published its new book on proceedings before the EPO. Rudolf Teschemacher, Bardehle Pagenberg, states on the cover:
"...Proceedings before the European Patent Office: A Practical Guide to Success in Opposition and Appeal keeps the promise made in its title and helps the practitioner to avoid procedural pitfalls. The authors come from different backgrounds and the book profits from their different perspectives. Two features of the Guide deserve to be highlighted. First, the emphasis on the interrelations between the different stages from drafting the application until the oral proceedings in opposition and appeal proceedings. Second, the numerous examples (from) relevant case law and the practical advice complementing the explanation of the procedural problems arising at different stages of opposition and appeal proceedings. In this way, the Guide illustrates the rules of the game before opposition divisions and boards of appeal and may help the users to avoid unpleasant and dangerous surprises. "
Syngenta v. Dutch Patent Office, Council of State, 18 February 2015, case no. 201406096/1/A3, with thanks to Edmon Oude Elferink, Conny Delissen, Willem Hoorneman and Rogier de Vrey, CMS Derks Star Busmann, for sending in a translation of the decision in English as well as a head note
The Dutch Council of State -the highest administrative court in the Netherlands- decides that it is possible to rectify – in this case: extend – the term of protection of an SPC, after it has been granted, if the term of protection of the certificate is incorrectly calculated.
In this case, the Netherlands Patent Office ("NPO") granted Syngenta an SPC on 9 December 2005 on the basis of a ('mono') Polish MA. It is now undisputed, after the University of Queensland judgment of the ECJ (C-630/10), that the SPC was granted on the basis of the wrong MA. The NPO should have used the Finnish "combi-MA" for the calculation of the term of the SPC. As a result, the certificate was valid until 24 March 2014 while, had the Finnish "combi-MA" been used, the term of the certificate would have extended for more than 1½ year.
Gallus Druckmaschinen GmBh v. MPS Systems B.V., District Court The Hague, the Netherlands, 4 March 2015, Case No. HA ZA 14-530, with thanks to Willem Hoyng and Robin van Kleeff, Hoyng Monegier, for providing the judgment as well as a head note
Gallus started accelerated patent proceedings against MPS on the basis of a patent on a rotary printing press for different printing technologies. MPS argued that it did not infringe, inter alia because its rotary printing presses did not comprise “an impression cylinder which is not replaced when the printing heads are replaced”. MPS asserted in its counterclaim that the patent was invalid.
Gallus subsequently amended the apparatus claims into method claims, but left out the above-mentioned feature and asserted that these new claims were infringed. MPS objected, since the accelerated regime only provides the patentee with a possibility to file a written reply in the (invalidity) counterclaim. The court allowed the objection, removed the case from the accelerated regime. The court then allowed the claim change, but provided MPS an additional opportunity to respond in the main (infringement) claim.