I am writing to you in the above matter because of great concerns of part of industry and practitioners as to the present status of the patent package, the lack of information and cooperation from the instances in Brussels and how this matter has been and is being handled in the Council, the Parliament and the Commission. Representatives of German industry had therefore asked me to provide a summary of the present situation, and in the course of my research I detected a number of unusual incidents which happened during the legislative process in Brussels. You will find attached an article in its English version which had already been distributed in German four weeks ago and will be published in German in the journal GRUR in a few days."
Read the entire email written by Dr. Pagenberg here.
Read the paper referred to by Dr. Pagenberg (in English) here. Read the documents referred to in the email here and here.
“Clear the way”: only a genuine competitor has standing to bring an action for patent revocation: Comments of Isabelle Romet and Dora Talvard (Véron & Associés) on judgment of the Court of Appeal of Paris, 17 February 2012 (Omnipharm v. Merial).
A claimant which fails to demonstrate its ability and intention to manufacture and market a competing product has no standing to bring an action for the revocation of a patent. The French judgment contrasts with the English one handed down by the Patents Court, Omnipharm Ltd v Merial [2011] EWHC 3393 (Pat) (21 December 2011) ([2011] EWHC 3393 (Pat)), which, in parallel proceedings, entitled the same claimant to the revocation action and incidentally decided that it had standing to bring an action for a declaration of non-infringement.
Court of Appeal on appeal from the High Court of Justice Chancery Division (Patents Court), Case No: A3/2011/2018 & 2018(Y), Nokia Coporation v. IPCom Gmbh & Co KG
The UK Court of Appeal has upheld a first instance finding of the Patents Court that IPCom's European Patent (UK) 1 841 268 was partially valid and infringed. Paragraphs 46-60 contain a useful summary of the UK approach to the assessment of added matter, with references to prior UK cases and decisions of the EPO.
Court of Appeal The Hague, 1 May2012, case number: HA ZA 09-4241, MSD v. Sandoz B.V. and Hexal A.G.
In its judgment of 1 May 2012, The Court of Appeal in The Hague confirmed the decision of the District Court that EP 0 509 752 and the corresponding SPC 990041 are invalid for lack of inventive step. Both the patent and the SPC relate to a combination of a β-blocker, timolol, and a carbonic anhydrase inhibitor (CAI), dorzolamide having (according to MSD’s auxiliary request) a pH value of 5.5-6.0. The combination (co-formulation) product is used for the treatment of glaucoma, an eye condition caused by excessive interocular pressure, in patients that do not sufficiently respond to the administration of only a β-blocker.
Medeva BV -v- Comptroller General of Patents, UK Court of Appeal [2012] EWCA Civ 523
In this decision, the Court of Appeal applied the much anticipated ruling of the Court of Justice made on 24 November 2011 to Medeva's applications for supplementary protection certificates relating to combination vaccines. In brief, the Court of Justice had ruled that Article 3(a) of Regulation (EC) No. 469/2009 precluded the patent offices of EU member states from granting an SPC relating to active ingredients "which are not specified in the wording of the claims of the basic patent relied on in support of the application". The relevant patent claim referred to a method of preparing a vaccine which "comprises" the preparation of two specified active ingredients. The claim made no express reference to the other active ingredients of the combination vaccine in respect of which the SPC applications had been made. Medeva sought to argue that because the word "comprises" or "comprising" in patent claims permits the inclusion of additional elements in addition to those elements expressly referred to, it followed that those additional elements were to be taken as being "specified" in the wording of the claim - a more narrow interpretation would mean that the SPC would fail to provide the same rights in relation to infringement as the underlying patent. The Court of Appeal rejected this argument. Medeva's approach would have the effect of apply the "infringement test" to the interpretation of Article 3(a), something which the Advocate General and the Court of Justice had themselves rejected. The test propounded by the Advocate General was "the subject matter of the patent" or "the scope of protection" test. It was for the national court to determine which active ingredients were specified in the wording of the claims. Where the line was to be drawn was something that would require further references to the Court of Justice, depending on the facts of future cases, but in this case it was clear that, wherever the line was drawn, the active ingredients relating to vaccines against diphtheria, tetanus, meningitis and polio were excluded. It followed that the UK Intellectual Property Office hearing officer and the first instance judge (Kitchin J) had correctly applied the provisions of Article 3(a) to the facts of this case and the appeal was dismissed.
ConvaTec Ltd and others -v- Smith & Nephew Healthcare Ltd and others, UK Court of Appeal [2012] EWCA Civ 520
This was an appeal from the decision of the Patents Court in 2011, which had held that claim 3 of the relevant patent - European Patent (UK) No. 0 927 013 - was valid but not infringed. ConvaTec appealed against the finding of non-infringement. Smith & Nephew appealed against the finding of validity. Both appeals were rejected and the decision of the first instance court was upheld. This case does not raise any new issues of law but is unusual, given the adversarial system employed by the UK courts, in that the first instance judge (His Honour Judge Birss) rejected the claim construction arguments of both sides and reached his own conclusion as to the meaning of claim 1. The Court of Appeal upheld this interpretation.
The 2012 'Innovation, Intellectual Property and Competition (IIPC) Conference' is a Tilburg Law and Economics Centre (TILEC) event featuring the authors who received an IIPC grant from TILEC in 2011 to support their research and produce a paper. The selected papers deal with the economics of patents, copyright and competition. This year's conference is complemented by two morning sessions where leading European and American legal scholars will discuss issues related to patent law, competition and innovation.
Entrance is free of charge, but registration is mandatory. Read more about the conference and registration here.
Koninklijke Philips Electronics N.V. (patentee) v. DSM IP Assets B. V. (opponent), Technical Board of Appeal 3.5.04, 12 March 2012, Case Nos. T 1553/06-3.5.04 "Public availability of documents on the World Wide Web/PHILIPS" and T 0002/09-3.5.04 "Public availability of an e-mail transmitted via the Internet/PHILIPS" with thanks to Stefan V. Steinbrener (Bardehle Pagenberg) for providing the case and summary
Both the European parent application 00200326.7 and its divisional 02077838.7 have been granted by the EPO to Philips and then opposed by DSM in a "joint venture" of patentee and opponent as contrived test cases regarding the question of whether documents placed inten-tionally on the Internet constituted prior art within the meaning of Article 54(2) EPC 1973. Those documents related to (i) web pages either certified to have been found by key words entered in a search engine or merely alleged to have existed on the Internet before the filing date of the parent application, and (ii) encrypted or unencrypted e-mails sent and received before said filing date, as certified in a notarial record.
Paris Court of First Instance, 6 April 2012, Merckle GmbH, Ratiopharm GmbH and Teva Santé S.A.S. vs. Sanofi Aventis (docket number 09/14154), with thanks to Barbara Bertholet and Jean-Baptiste Chanial (ADAMAS) for providing the case and head note
This decision relates to an action for a declaration of non-infringement initiated by Merckle GmbH, Ratiopharm GmbH and Labotaroire Ratiopharm (now Teva Santé S.A.S.) against EP 0 881 901 owned by Sanofi Aventis.
The subject-matter of EP 0 881 901 is a pharmaceutical composition containing a combination of active ingredients, wherein the active ingredients are clopidogrel and aspirin, notably used for the treatment of illness caused by platelet aggregation. Clopidogrel besylate and aspirin (INN acetylsalicylic acid) both belong to the public domain.
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