|
EPC
Reporter:
Petri van Someren
Arnold & Siedsma, Nijmegen |
| 1Du Pont v. Dyneon |
| European Patent Office (EPO Board of Appeal),
12 October 2007 |
| Appellant 1 |
E.I. Du Pont de Nemours and Company |
| Appellant 2 |
Dyneon LLC |
| Key areas |
Novelty
Inventive step
Extension of
subject-matter
Extent of protection (Scope of protection) |
| Relevant terms |
Wording of use claims |
Headnote
In previous
decisions G 0002/88 and G 0006/88, the Enlarged Board of Appeal
limited its orders in explicitly to a claim to the "use of a known
compound", in which a technical effect should be interpreted as a
functional technical feature. In this case, the Technical Board of
Appeal held that this leaves no room for further expansion of this
ruling to claims worded otherwise. The Technical Board of Appeal
shares the view expressed in No. 3.2.3 of the reasons in T 0210/93
that the use of a process for a particular purpose is "nothing but
that very same process". |
See for the summary of this
case KluwerEUIPCases.com |
See also
http://legal.european-patent-office.org/dg3/pd... | |
 |
|
Italy
Reporter:
Prof. Avv. Mario Franzosi
Avvocati Associati Franzosi Dal Negro Pensato, Milan |
| 2Bausch Lomb v. Wesley |
| Court of Appeal Milan (Corte d’Appello
Milano), 22 May 2008 |
| Appellant |
BAUSCH & LOMB IOM s.p.a. |
| Key areas |
Inventive step
Novelty
Validity |
| Relevant terms |
Affidavit |
Headnote
The Court of
Appeal of Milan, reversing the earlier decision by the Court of
Monza of 24 June 2005, held that – from a procedural point of view
– a single affidavit or statement of a witness in Court
constitutes a piece of evidence valid and sufficient to destroy
the novelty and/or inventive step of the patented invention if it
is corroborated by a relevant document and other circumstances. In
this context, the Court of Appeal considered the statements made
in an affidavit valid and sufficient evidence whenever, as in this
case: (a) there is cross-examination with documents; and (b) the
statements made in the affidavit have already been evaluated as
reliable evidence in previous deposition testimony in an English
case (Patents County Court). In other words, the Court considered
the verification and examination of the statements made by the
English Court particularly relevant and corroborating a sort of
clue to integrate the foundation of a decisio! n in concourse with
other circumstances. |
See for the summary of this
case KluwerEUIPCases.com | |
|
|
Netherlands
Reporter:
Marjanka Vermunt
Brinkhof, Amsterdam |
| 3Pharmachemie/Servier |
| District Court The Hague (Rechtbank Den Haag),
11 June 2008 |
| Claimant |
Pharmachemie B.V. |
| Defendant |
Les Laboratores Servier |
| Key areas |
Inventive step
Validity |
| Relevant terms |
Prior art
Common general knowledge |
Headnote
The Hague District
Court nullified Servier’s patent EP 1 296 947 B1 for an alpha
crystalline form of perindopril tert-butylamine salt and a process
for its preparation on the basis of lack of inventive step.
According to the court, the skilled person, confronted with the
problem the invention solved, i.e. how to prevent or reduce
blockage by crystals in the filter, would have known on the basis
of his common general knowledge that blockage could be avoided or
reduced by having larger crystals and that such larger crystals
can be obtained by cooling more slowly. See also the Court of
Appeal of England and Wales (Les Laboratoires/Apotex [2008] EWCA
Civ 445). The Hague District Court did not deal with the claims as
amended by the Opposition Division, as an appeal was pending
before the Technical Boards of Appeal. |
See for the summary of this
case KluwerEUIPCases.com |
See also
http://www.boek9.nl/getobject.aspx?id=4733 | |
|
|
Netherlands
Reporter:
Raoul Soullié
Brinkhof, Amsterdam |
| 4Aventis Holdings Inc. v. Octrooicentrum
Nederland |
| District Court The Hague (Rechtbank Den Haag),
28 May 2008 |
| Claimant |
Aventis Holdings Inc. |
| Defendant |
Octrooicentrum Nederland (Dutch Patent
Office) |
| Key areas |
Extent of protection (Scope of
protection) |
| Relevant terms |
SPC
Combination of active ingredients
EU
Regulation 1768/92
Cetuximab |
Headnote
The Hague District
Court upheld the decision of the Dutch Patent Office not to grant
an SPC for the monoclonal antibody cetuximab, because the
cetuximab as such was not protected by the basic patent, as only a
composition comprising this monoclonal antibody and an
anti-neoplastic agent was claimed. The Court considered that, as
cetuximab is not necessarily for use in combination with an
anti-neoplastic agent, like irinotecan, offering and delivering
cetuximab would not be necessarily protected by the patent on the
basis of contributory infringement. The Hague District Court also
upheld the decision of the Dutch Patent Office not to grant an SPC
for cetuximab in combination with irinotecan (the anti-neoplastic
agent), because the market authorization mentions cetuximab (not
cetuximab in combination with irinotecan), notwithstanding that
the therapeutic indication in the market authorization is use with
irinotecan. |
See for the summary of this
case KluwerEUIPCases.com |
See also
http://www.boek9.nl/getobject.aspx?id=4700 | |
|
|
Netherlands
Reporter:
Raoul Soullié
Brinkhof, Amsterdam |
| 5AHP Manufacturing B.V. v. Octrooicentrum
Nederland |
| District Court The Hague (Rechtbank Den Haag),
22 October 2007 |
| Claimant |
AHP Manufacturing B.V. |
| Defendant |
Octrooicentrum Nederland (Dutch Patent
Office) |
| Key areas |
Extent of protection (Scope of
protection) |
| Relevant terms |
Active ingredient
EU-Regulation
1768/92
Entanercept
SPC |
Headnote
An SPC application
was filed for a product with the active ingredient entanercept for
which several SPC’s had been granted earlier on the basis of
different basic patents. The Dutch Patent Office rejected the
application on the basis of article 3(1) sub c of the EU
Regulation 1768/92 on SPC’s. The Hague District Court referred
several questions to the European Court of Justice with regard to
the scope of art. 3 (1) sub c of the SPC Regulation, i.e. whether
an SPC should be granted if it is not the first certificate for
the specific product, and with regard to article 7 of the SPC
Regulation, on the significance of the order of filing in case of
more than one pending application for an SPC for the same product.
|
See for the summary of this
case KluwerEUIPCases.com | |
|
|
Spain
Reporter:
Dr. Miquel Montañá
Clifford Chance, Barcelona |
| 6Amlodipine Case |
| Provincial Court Barcelona (Audiencia Provincial
Barcelona), 9 May 2008 |
| Defendant |
n.a. |
| Key areas |
Biotechnology
Validity
Extent of
protection (Scope of protection) |
| Relevant terms |
Patent
Reversal of burden of proof |
Headnote
On 26 May 2008,
the Court of Appeal of Barcelona published a judgment dated 9 May
2008 confirming the novelty and inventive activity of patent ES
520,389, which claimed a process to obtain amlodipine, and patent
EP 244,944, which claimed a process to obtain besylate amlodipine.
This is the fifth judgment from a Spanish Court of Appeal
confirming the validity of both patents. It deviates from the
conclusions reached in a judgment handed down by the Court of
Appeal of Madrid (Section 10) on 24 April 2006 which was not
followed either by Section 12 of the same Court of Appeal in a
later judgment of 19 December 2006. One of the most interesting
aspects of the Judgment of 9 May 2008, which is a landmark
decision due to the depth in which the technical issues raised by
the case are examined, is that the Court has clarified that the
"reversal of the burden of proof" principle obliges the defendant
to prove both the process used to obtain the product and that that
process does not fall within the scope of protection of the
patent. The defendant had alleged that this rule only obliged them
to prove the first aspect (i.e. the process used). After
considering the evidence, the Court concludes that the process
described in Gedeon Richter's patent application WO-A-01/02360
falls within the scope of protection of both patents. |
See for the summary of this
case KluwerEUIPCases.com | |
