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Step by Step towards Inventive Step – Determining the Closest Prior Art comes first (R 5/13 et al.)

In the oral proceedings held in the EPO appeal case T 1760/11 the Board of Appeal (BoA) 3.3.01 selected one single closest prior art (CPA) document for the inventive step assessment and then denied the opponents the opportunity to present inventive step attacks starting from other CPAs. Petitions for review under Article 112a EPC were filed. The BoA’s denial did not constitute a violation of the right to be heard, said the Enlarged Board of Appeal (EBA) in the decisions R 5/13 and (identical) R 9/13 to R13/13.

The underlying Case of T 1760/11

The issue under discussion was the assessment of inventive step. The Opposition Division had earlier revoked the patent inter alia for lack of inventiv [...]

If it were done when ‘tis done, then ‘twere well it were done quickly

By Rachel Mumby and Brian Cordery

We reported recently that the IPCom Guidelines which set out when the English Court should stay patent actions pending EPO oppositions appear to be “More honour’d in the breach than the observance”. This had been in response to the decision of Arnold J of 10 July 2014 who had refused to grant such a stay despite relatively broad undertakings offered by the patentee in relation to such a stay.

In the postscript to the above judgment, Arnold J noted that after he had released his judgment in draft, the patentee, Pharmacia, had offered two additional undertakings to Actavis, the potential infringer, in return for a stay. In a new judgment, handed down [...]

Limitation of the reach of a preliminary injunction and no absolute application of the prima facie validity of a patent

PI proceedings have always been a powerful weapon for patentees in Belgium.  In such proceedings before the President of the Commercial Court a full legal analysis of the parties’ rights cannot be made. The President will only prima facie asses the parties’ rights and claims. As a result, invalidity arguments are not taken into account given the presumption of validity of a European patent, even if the patent has been revoked in EPO opposition proceedings or if there are foreign decisions invalidating the parallel national pat­ents. 

In the Belgian escitalopram-litigation Lundbeck was able to obtain a PI under its escitalopram SPC despite the fact that an earlier first instance deci [...]

Eli Lilly v HGS – Declaration Denied

It is perhaps a poor reflection on the CJEU that it regularly issues rulings that, when the case is restored before the referring court, lead both parties to an action to claim victory. However this happened yet again when Warren J was given the unenviable task of implementing one of the trio of references decided by the CJEU last December in the world of SPCs.

Most readers will already be familiar with the facts of the Eli Lilly v HGS case. HGS has a patent directed to Neutrokine-alpha which includes a claim to antibodies which bind to this protein. This claim is drawn at a fairly broad level – anything that binds specifically to the full length Neutrokine-alpha polypeptide or the extra [...]

Patentability of biotechnological inventions before the CJEU – A narrower construction of the “no-go zone” than in Brüstle or simply different facts?

On 17 July 2014, Advocate General Pedro Cruz Villalón issued his opinion in Case C-364/13 International Stem Cell Corporation v. Comptroller General of Patents, whereby he proposed that the Court of Justice of the European Union (“CJEU”) give the following response to a question referred by the High Court of Justice, Chancery Division (Patents Court), of England and Wales regarding the meaning of “human embryos” in article 6(2) (c) of Directive 98/44/EC: “Unfertilised human ova whose division and further development have been stimulated by parthenogenesis are not included in the term “human embryos” in article 6(2) (c) of Directive 98/44/EC of the European Parliament and of the Council of 6 [...]

Exploring Perspectives of the Unified Patent Court and Unitary Patent within the Business and Legal Communities – A Report for the UK Intellectual Property Office

Since the announcement of the establishment of the Unified Patent Court (UPC) and Unitary Patent (UP) for Europe there has been much speculation concerning the potential positives and negatives of the new system, but little empirical evidence has been provided on the subject. For this reason, in January 2014 the UK Intellectual Property Office (IPO) commissioned a qualitative, empirical study of the views of the UPC and UP within the business and legal communities. The study was launched at the Chartered Institute of Patent Attorneys in London on July 9th.

The three main objectives of the study were as follows:

– To identify the key issues of concern to the business and legal sectors with [...]

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