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Swiss Form Claims and Skinny Labelling – the Lyrica Case

Most readers will know that so-called Swiss form claims (“Use of drug X in the manufacture of a medicament for the treatment of disease Y”) were first proposed by the Enlarged Board of Appeal of the EPO in the EISAI case back in December 1984 to allow new uses for known drugs to be patented. This area is of considerable importance, because, as was set out in the resolution of AIPPI on this issue passed at the Toronto congress in September 2014: “Second medical uses may provide solutions to unmet medical needs and provide significant benefits to patients. They may require significant investment in research and development and represent socially, medically and economically valuable [...]

Federal Court of Justice: Claims Normally Cover at Least one Embodiment

by Niels Hölder and Thomas Koch

In “Zugriffsrechte” (Rights of Access) (docket X ZR 35/11), the Federal Court of Justice decided that a claim can in principle not be construed such that it covers none of the embodiments described in the specification.

To simplify the facts, the claim in question specified two process steps. The Federal Patent Court had interpreted the claim so as to require that the steps are performed in the specific order mentioned in the claim, thereby rendering the subject matter novel over the prior art where this specific order had not been disclosed (docket 5 Ni 67/09). However, in all of the embodiments described in the specification, those steps were applied in [...]

Dosage claims refused once again in France

The non patent eligibility of a new dosage for the same disease was reiterated by a decision issued by the tribunal de grande instance de Paris, 3rd chamber, 3rd section, handed down on 5 December 2014 in the infringement proceedings between Akzo Nobel NV, MSD OSS BV and MSD France SAS, on the one hand, and Teva Santé SAS, Ratiopharm GmbH, Merckle GmbH and Cemelog-BRS Ltd, on the other hand.

Teva was sued for launching a generic of the reference drug Cerazette a few months before the expiry of MSD’s supplementary protection certificate based on European patent № 0 491 443 relating to a contraceptive preparation containing progestogen only, more precisely desogestrel, 3-ketodesoges [...]

The Advocate General on the Spanish “unitary patent” challenges: A Statement of (Op-)position

 By Rechtsanwalt Dr. Ingve Björn Stjerna, LL.M., Certified Specialist for Intellectual Property Law, Düsseldorf. This article reflects the personal opinion of the author.

On 18 November 2014 Advocate General Yves Bot delivered his Statements of Position (afterwards “Opinions”) in terms of Spain’s nullity actions against the two Regulations on the “unitary patent”, his recommendation to the CJEU being a rejection of the complaints. Upon a closer examination, the impression arises that especially the Opinion in case C-146/13 largely tries to avoid any contextual debate of the critical aspects raised, e. g. in relation to the adequacy of legal protection at the European Patent Of [...]

Recent judgment from Court of Appeal of Navarre illustrates that launching at risk can be a painful gardening experience

Many readers, particularly those based on one of the islands to the Northwest of the Canal de La Manche, will remember the famous metaphor used by then Justice Robin Jacob in his Decision of 23 October de 2001 (paroxetine):

The defendants could, so soon as they settled upon the product they were intending to sell, have caused the litigation to start. They could have done a number of things: First, they could have launched a petition for the revocation of the patent and started a claim for a declaration of non-infringement. Or, since there are certain difficulties with the latter (for example onus of proof goes the other way round), they could simply have said to the patentees, “We intend (w [...]

Philips sees no reason to opt-out patents from the Unified Patent Court

scheerapparaat kleinThe Dutch company Philips is among the top-10 Patent Cooperation Treaty (PCT) applicants and the top-3 European Patent Convention (EPC) applicants. Owning about 64,000 patents and filing approximately 1,500 patent applications each year (with a strong focus on the growth areas of health and well-being), much is at stake for the company with the introduction of a Unified Patent Court (UPC) and the Unitary Patent (UP). Philips’ principal IP Counsel Leo Steenbeek told Kluwer IP Law in an interview he hopes financial demands of UP member states won´t lead to unrealistic high renewal fees. Philips won’t opt-out patents when the UPC starts functioning.

Does Philips usually validate patents in [...]

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