Lundbeck v. Generics, Court of Appeal Civil Division (House of Lords of England and Wales), 25 February 2009
The patent in suit contains claims for the (+)enantiomer of citalopram and a method for its resolution from the racemate (the diol method). The Defendants appealed a decision of the Court of Appeal arguing that the patent was insufficient because it effectively claimed the (+)enantiomer made by any method whereas the specification only disclosed two ways of making it. Resolution of the (+)enantiomer was a known desirable goal at the priority date of the patent. The Defendants submitted that the only technical contribution was the method of resolution taught (the diol method) and therefore only that process, and not the (+)enantiomer itself, can be claimed. The House of Lords ruled that the p [...]
Spatial connector, Administrative Court of Voivodeship Warsaw (Wojewódzki Sąd Administracyjny w Warszawie), 25 February 2009
In this case the Court holds that documents and explanations relating to a patent application should be corrected or changed at the request of the Polish Patent Office within a fixed time period and under penalty of discontinuation of the proceedings. A faulty application and non-compliance with such requests may result in the refusal to recognise the subject matter of the application as an invention.
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[...]Kelly & Ors v. GE Healthcare, High Court of England and Wales (Patents Court) (High Court of England and Wales (Patents Court)), 11 February 2009
- By Sam Tuxford,
for Kluwer IP Cases
Two research scientists, involved with the synthesis of a compound which formed the basis of a patented heart imaging agent, brought what is the first ever successful action under Section 40 of the Patents Act 1977, arguing that the patents are of outstanding benefit to their employer, and as such, they are entitled to a fair share of this benefit. The Court concluded that the patents had been of outstanding benefit and having valued the benefit as in the order of GBP 50,000,000 awarded GBP 1,000,000 to the 1st Claimant and GBP 500,000 to the 2nd Claimant on the basis that: ‘The benefits [of the patent] went far beyond anything which one could normally expect to arise from the sort of work [...]
Novartis v. Johnson & Johnson, District Court The Hague (Rechtbank Den Haag), 11 February 2009
- By Mark van Gardingen, Brinkhof,
for Kluwer IP Cases
Lack of novelty by re-working prior art requires that the re-works must inevitably lead to results falling within the claim of the patent at issue. If choices have to be made for the re-working process, the result is not inevitable.A possible breach of Article 84 EPC (clarity) does not lead to nullity. The Court states that an incorrect formula in the claims does not lead to violation of Article 83 EPC if a person skilled in art can still use the patent without undue burden. Furthermore the Court states that to successfully claim partial priority according to Article 88 (3) EPC, it is sufficient that the priority document discloses ‘elements of’ the patent.
The full text and summary of t [...]
Yanko Tsv. A. v. Bulgarian Patent Office, Supreme Administrative Court (Върховен Административен Съд), 10 February 2009
- By Ivan Marinov,
for Kluwer IP Cases
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.
The full text and summary of this case will be posted on http://www.KluwerIPCases.
[...]Ex parte Nintendo, European Patent Office (Appeals Court), 6 February 2009
- By Lars de Haas,
for Kluwer IP Cases
The Board reversed a refusal of the patent application for lack of technical contribution. The underlying decision had expressed the view that the idea of making chance encounters depend on time was a game rule, which is itself excluded from patentability and had been implemented in straightforward manner. In its classical sense game rules form the abstract formal structure of a game, describing the interplay between player actions and the choices offered within the game. According to the Board the claimed solution is not so much concerned with this rule per se, as with the particular manner in which it is realized. Also, the way in which the time dependent chance encounters are generated do [...]
