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New Cases
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Summarized Cases
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New Cases
Recent case law materials submitted by the reporters and, if applicable, made
available in PDF format or as a hyperlink on: www.KluwerIPCases.com . Full reports will be available shortly.
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EPC
Reporter:
Bart van Wezenbeek
Vereenigde, Den Haag |
| 1 Retraction of withdrawal/BACTERIN |
| European Patent Office (EPO Board of Appeal), 16 November 2009
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| Appellant | Bacterin International, Inc. |
| Key areas |
Validity |
| Relevant terms | Withdrawal
Correction of errors |
Headnote
Correction of a letter of withdrawal under Rule 139 EPC is only possible if the public has not yet been officially informed about the withdrawal.
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See for the full text of this case www.KluwerIPCases.com |
See also
http://legal.european-patent-office.org/dg3/pd... |
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EPC
Reporter:
Bart van Wezenbeek
Vereenigde, Den Haag |
| 2 Neutrokine/HUMAN GENOME SCIENCES |
| European Patent Office (EPO Board of Appeal), 21 October 2009
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| Appellant | Human genome Sciences, Inc. | | Respondent | Eli Lilly and Company |
| Key areas |
Sufficiency of disclosure
Industrial application
Revocation |
| Relevant terms | Parallel proceedings |
Headnote
In case of parallel proceedings before a national court and the Boards of Appeal, parties should inform both tribunals of this position as early as possible. In order to avoid duplication of proceedings, the parties should ask the appropriate tribunal for acceleration. Whether acceleration is requested by one party, or both or all parties in agreement, or by a national court, all parties must accept a strict procedural framework, including short time limits. Acceleration can have no effect on the equal treatment of all parties and cannot confer any advantage on any one party.
An objection of lack of industrial application (Article 57 EPC) requires the same standard of proof as an objection of insufficient disclosure (Article 83 EPC), namely serious doubts substantiated by verifiable facts.
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See for the full text of this case www.KluwerIPCases.com |
See also
http://legal.european-patent-office.org/dg3/pd... |
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EPC
Reporter:
Bart van Wezenbeek
Vereenigde, Den Haag |
| 3 PDL Biopharma - humanized antibodies |
| European Patent Office (EPO Board of Appeal), 14 October 2009
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| Appellant | PDL BioPharma, Inc. | | Respondent 1 | Boehringer Ingelheim GmbH | | Respondent 2 | Medimmune, Inc. | | Respondent 3 | Schering Corporation | | Respondent 4 | Celltech R&D Ltd. | | Respondent 5 | Xoma LLC | | Respondent 6 | Novartis AG | | Respondent 7 | IDEC Pharmaceuticals Corpn |
| Key areas |
Amendments
Biotechnology |
| Relevant terms | Divisional - added subject matter
Obiter dictum |
Headnote
This decision of the Board of Appeal covers two questions of interest:
1) May an Opposition Division include an obiter dictum in its decision? (The answer in this case is yes.)
2) To what extent is amendment in the background section of the description allowed in a divisional application?
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See for the full text of this case www.KluwerIPCases.com |
See also
http://legal.european-patent-office.org/dg3/pd... |
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EPC
Reporter:
Ferry van Looijengoed
De Vries & Metman, Amsterdam |
| 4 Imperceptibly different image/HOURPLACE |
| European Patent Office (EPO Board of Appeal), 30 September 2009
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| Appellant | Hourplace LLC |
| Key areas |
Exceptions to patentability |
| Relevant terms | Statement of grounds of appeal
Treatment of non-technical problems |
Headnote
The appellant in this case filed a statement of grounds against the decision of the examining division to refuse a patent application. For the main request this statement only stated that it was believed that the application met the requirements of the European Patent Convention and maintained the arguments presented in the examination procedure. For an auxiliary request, the appellant provided further arguments.
The Board of Appeal decided that the appeal as a whole was admissible. However, the main request was not, since the appellant’s arguments were already dealt with in the decision of the examining division and the Board could not understand immediately from the statement of grounds why the decision was allegedly incorrect.
As regards to the auxiliary request, the Board considered that the problem mentioned in the application was non-technical. The scope of the claims would cover subject-matter where the only relevant effect would be non-technical. Therefore, the Board found it necessary to reformulate the problem such that non-technical aims would be part of the problem for application of the problem and solution (see T 641/00). After doing so, the claimed subject-matter was held non-inventive.
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See for the full text of this case www.KluwerIPCases.com |
See also
http://legal.european-patent-office.org/dg3/pd... |
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Germany
Reporter:
Marcus Coehn
Bardehle Pagenberg Dost Altenburg Geissler, Munich |
| 5 Escitalopram |
| Federal Court of Justice (Bundesgerichtshof), 10 September 2009
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| Plaintiff | Anonymous | | Defendant | Anonymous |
| Key areas |
Inventive step
Public prior use |
| Relevant terms | Enantiomer
Racemate
Racemic
Medicament |
Headnote
The Federal Court of Justice further clarifies the scope of disclosure of a prior art document and the criteria for determining inventive step after the landmark decision 'Olanzapin'. More specifically, the Court ruled that:
a) a prior art disclosure of an enantiomeric compound does not clearly and unambiguously disclose the actual enantiomers unless the disclosure also makes available a method for readily obtaining said enantiomers;
b) if the skilled person is faced with the problem of finding an alternative pharmaceutical and if several compounds or classes of compounds are available as such an alternative the selection of a specific compound is already part of the solution of the problem to be solved;
c) the provision of a single enantiomer which formerly was only disclosed as racemate can be inventive even if the existence of the enantiomer was apparent to the skilled person. Rather, it is decisive whether there was an obvious method available in the art for obtaining said enantiomer.
Furthermore, the Court ruled that the same principles apply to the interpretation of Article 3 d) EC 469/2009 (SPC Regulation): A market authorization for a medicament that contains the compound as racemate is not detrimental for a SPC that is directed to the specific enantiomer and that is based on its own patent and market authorization.
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See for the full text of this case www.KluwerIPCases.com |
See also
http://juris.bundesgerichtshof.de/cgi-bin/rech... |
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Switzerland
Reporter:
Andri Hess
Homburger AG |
| 6 Einkomponentige Dichtmasse |
| Commercial Court of the Canton of St. Gall (Handelsgericht des Kantons St. Gallen), 23 June 2008
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| Plaintiff | A. AG | | Defendant | B. AG |
| Key areas |
Chemical engineering
Inventive step
Novelty
Revocation
Sufficiency of disclosure
Validity |
| Relevant terms | Relevance of expert opinion on issues not raised by the parties |
Headnote
In preliminary injunction proceedings, the Court appointed expert found that the patent in suit did not sufficiently disclose the claimed invention and did not enable the skilled person to practice the invention. Plaintiff patentee opposed these findings. He argued that defendant infringer had not contested the sufficiency of disclosure at all in the preliminary injunction proceedings and that the expert's findings on this point for this reason should not be considered by the Court. In its judgment, the Court discusses under what circumstances a court may base its holdings on the findings of a court appointed expert on issues not pleaded by the parties.
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See for the full text of this case www.KluwerIPCases.com |
See also
http://www.gerichte.sg.ch |
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Summarized Cases
Recent case law materials summarized and/or annotated by the reporters and made
(browsable and fully searchable) available on www.KluwerIPCases.com
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Belgium
Reporter:
Christel Brion and Florence Verhoestraete
Nauta Dutilh, Brussels |
| 1 Merck v. Teva |
| Commercial Court Antwerp (Rechtbank van Koophandel te Antwerpen), 20 October 2009
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| Plaintiff 1 | Merck & Co Inc. | | Plaintiff 2 | Merck Sharp & Dohme BV | | Defendant 1 | Teva Pharma Belgium NV | | Defendant 2 | Teva Generics Belgium |
| Key areas |
Equivalents
Enforcement
Injunction
Extent of protection (Scope of protection) |
| Relevant terms | Generic competition |
Headnote
The Antwerp Commercial Court dismissed Merck’s claim for injunctive relief against Teva, ruling that Teva’s montelukast-based generic medicines do not infringe Merck’s European patent (EP 0 737 186) with respect to an improved process for preparation of the active ingredient montelukast, either literally or by equivalents.
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See for the summary of this case www.KluwerIPCases.com |
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Bulgaria
Reporter:
Ivan Marinov
Delchev & Partners, Sofia |
| 2 Yanko Tsv. A. v. Bulgarian Patent Office |
| Supreme Administrative Court (Върховен Административен Съд), 10 February 2009
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| Complainant | Yanko Tsv. A. | | Defendant | Bulgarian Patent Office |
| Key areas |
Industrial application |
| Relevant terms | Industrial application |
Headnote
Mr Yanko Tsv. A. filed an application with the Bulgarian Patent Office (BPO) for the grant of a patent for an ‘Active solar heating system’. The BPO dismissed the application as the Expert Department of ‘Mechanical Engineering, Construction, Electronics and Electronical Engineering’ determined that the invention applied for was not industrially applicable and therefore not patentable. Mr Yanko Tsv. A. appealed the decision of the Expert Department before the ‘Department of Disputes’ of the BPO and then before the Court.
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See for the summary of this case www.KluwerIPCases.com |
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Bulgaria
Reporter:
Ivan Marinov
Delchev & Partners, Sofia |
| 3 Bulgarian Patent Office v. Eldom Start OOD |
| Supreme Administrative Court (Върховен Административен Съд), 27 October 2008
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| Complainant | Bulgarian Patent Office | | Defendant 1 | Eldom-Start OOD | | Defendant 2 | Mr Stoyan S.K. |
| Key areas |
Novelty |
| Relevant terms | Earlier patent existing |
Headnote
Mr Stoyan S.K. was granted a patent for an invention called ‘electric grate’ by the Bulgarian Patent Office. Eldom-Start OOD challenged the validity of the patent in court. The Bulgarian Supreme Administrative Court ascertained that the invention was not novel over an earlier American patent that covered all the technical specifications of the Bulgarian patent. The Bulgarian Supreme Administrative Court therefore returned the case to the Bulgarian Patent Office for reconsideration.
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See for the summary of this case www.KluwerIPCases.com |
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Germany
Reporter:
Christian Steudtner, Clemens Rübel
Bardehle Pagenberg Dost Altenburg Geissler, Munich |
| 4 Apparatus for closing containers |
| Federal Court of Justice (Bundesgerichtshof), 7 October 2009
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| Plaintiff | Anonymous | | Defendant | Anonymous |
| Key areas |
Added matter
Mechanical engineering |
| Relevant terms | Straw man
Trade name
Standing to sue
Amicable settlement
No-challenge clause |
Headnote
The Federal Court of Justice confirmed the legal reasoning of the Federal Patent Court that a company that continued the business of another company, while it was founded independently from the continued company and does not take over the trade name under which it conducted business, is not bound by a non-contest clause between the continued company and the patent holder. This applies even to cases where the new company can be suspected to act as a straw man in order to evade the non-contest clause. This may violate the non-contest clause, but does not eliminate the right to sue of the new company in nullity actions against the patent.
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See for the summary of this case www.KluwerIPCases.com |
See also
http://juris.bundesgerichtshof.de/cgi-bin/rech... |
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