Of Mice and Elephants
In this blog I report about how the Bundesgerichtshof (BGH) has recently eliminated some potential for conflicting decisions in Germany’s bifurcated patent litigation system.
The separation of infringement and invalidity proceedings is the basis for what we call the “mouse and elephant strategy”. In the infringement proceedings the patentee tries to establish a scope of protection of the size of an elephant and in the nullity proceedings the same patentee tries to establish a scope of protection of the size of a mouse. If he patentee succeeds, he can – in the extreme – achieve that the infringement court finds an embodiment which is within the prior art to be infringing the patent and t [...]
Are “Omnibus” Claims Enforceable in Spain?
The last year has kept some Spanish Courts busy with a debate that already caught the attention of English Courts at the beginning of the XX century, that is, whether “omnibus” claims are enforceable. Article 100 of the “Estatuto de la Propiedad Industrial” of 1929 required that the last claim of the patent was an “omnibus” claim summarizing the core of the invention protected. According to the Seventh Transitional Provision of the 1986 Patents Act, the scope of protection of both “old” and “new” patents is governed by the new Patents Act. According to Article 60.1 of the new Patents Act, which mirrors Article 69 of the European Patent Convention, the scope of protection of patents is determ [...]
Dutch Patent Office limits protection of antibody patent in SPC case
In a decision of 7 September 2010, the Dutch Patent Office (NL Octrooicentrum) on appeal confirmed its earlier decision to not grant a supplementary protection certificate (SPC) for the medicinal product tocilizumab, a humanized monoclonal antibody against the human interleukin-6 receptor, which is approved as a human rheumatoid arthritis drug.
The applicant had requested an SPC based on a basic patent claiming “a monoclonal antibody to human interleukin-6 receptor”. The Patent Office refused to grant an SPC because in its opinion the product tocilizumab was not protected by the basic patent under Article 3 (a) of the SPC Regulation, because it was not part of the “subject-matter” of [...]
Danish patent case settlements – an informal investigation
In July 2010, the European Commission published a press release on its findings in the Report on the monitoring of patent settlements (Press release IP/10/887).
Sparked by this survey, we have conducted an informal investigation into patent settlements in Denmark during the period January 2000 until January 2010, which shows that during this period in Denmark an approximate number of (at least) 40 pharmaceutical patent cases were initiated in Denmark. Of those 40 cases 15 were settled prior to a judgement being rendered, although in some cases an preliminary injunction had been granted.
It is not possible through public records in Denmark to ascertain on which terms the cases have been settl [...]
New provision on mere MA application as an act of patent infringement
By Legislative Decree no. 131 of 13 August 2010, which became effective on 2 September 2010, the Italian legislator passed a number of amendments to the Italian IP Code. One of these is new Art. 68 (1bis) on the statutory limitations to patent rights (which in paragraph 1 already included, and still includes, personal use, experimental use, Bolar Exception and pharmacy exception). Decree no. 131/2010 added new paragraph 1 bis which reads:
Without prejudice to paragraph 1, companies intending to manufacture pharmaceutical specialties outside the patent protection may commence the registration procedure concerning the product containing the active ingredient one year before the expiry of the s [...]
A new era for low cost patent litigation in England and Wales
On 1 October 2010 the Patents County Court is due to be re-launched with a new set of procedural rules. The aim of the reforms is to provide a cheaper and quicker forum than the High Court for litigating relatively straightforward and low-value IP disputes. Hand-in-hand with the changes in procedure comes the appointment of a new judge – Colin Birss, QC. As a barrister, Colin Birss was known for adopting a dynamic and rigorous approach to his cases and his appointment as the new judge, combined with the procedural rules, is likely to make the PCC, or the Intellectual Property County Court (as it will soon be known) an attractive forum for litigants in smaller IP disputes.
The Patents Co [...]
