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Obvious to try in all but name?

The applicability of the obvious to try question has been a thorny issue in UK patent law for some time, and the desire for a party seeking invalidity to apply this test has pervaded many recent pharmaceutical patent cases in the UK, particularly where the patent claims a single enantiomer and the prior art indicates that the racemate is pharmaceutically active, or more generally where the compound of the claim was previously disclosed as part of a larger group of potential compounds.

In Medimmune Ltd v Novartis Pharmaceuticals UK Ltd & Ors [2012] EWCA Civ 1234, the Court of Appeal of England and Wales made clear that whether a particular step was obvious to try (or not) was not a replacem [...]

New fees EPO

The fees of the EPO will shortly be increased by about 5%. The EPO compensates the fees for inflation each two years; the period of two years is a compromise between frequent compensation for inflation and administrative effort of such a fee change.
The increased amounts will apply to payments made on or after 1 April 2012, i.e. payments actually entered in an EPO bank account on or after that date. Exceptionally, the increased amounts of the international search fee and the transmittal fee apply to international applications filed on or after 1 April 2012. If within six months of a fee increase the old amount of the fee is paid, the fee will be regarded validly paid if the deficit is paid [...]

New background material on EPC available

The book ‘The Granting of European Patents’ by M. van Empel has recently been added to the (subscription) website kluwerpatentlaw.com. The book was published in 1975, was out of print within a few years and has never been reprinted. This very useful book has now been made available again.

The book describes the development of the European Patent Convention from the first exploratory discussions till the Munich Diplomatic Conference. It is an indispensible description of the background of the EPC 1973. The book will be a welcome summary of the more than 30 000 pages of the Travaux Préparatoires EPC 1973, which the EPO has recently made available on their website.

In the time of the Munic [...]

Updated edition of the Annotated European Patent Convention

The new edition of the bestseller The Annotated European Patent Convention (Derk Visser, 2010) will be published on paper on 15 December 2010, but is already available for subscribers on www.KluwerPatentLaw.com. The 18th edition of the book has been updated till 15 November 2010. It contains the consolidated text of the EPC accompanied by extensive commentary and a detailed overview of the PCT with cross-references to the EPC.

The new edition includes amendments within the framework of the EPO initiative Raising the Bar. It covers the restrictions on filing divisional applications, the amended search procedures, restrictions in amendment of the application, and the mandatory response to the [...]

Improved procedure for Euro-PCT applications

European patent practitioners are welcoming the news that the EPO Administrative Council reached a decision on 26 October 2010 to extend the period for responding to a communication under Rule 161 EPC from one month to six months as of 1 May 2011. Since 1 April 2010, practitioners have been put under considerable pressure as a result of the recently introduced requirement to respond to PCT Written Opinions or International Preliminary Examination Reports issued by the European Patent Office as International Searching Authority within the one-month time period for responding to a Rule 161 communication that is issued shortly after entry to the European regional phase. This issue has been pa [...]

An Enlarged Board of Appeal problem

In decision G2/08, available on the EPO website, the Enlarged Board of Appeal provides a problem in relation to the Swiss type claims. It announces the abolition of the use of these claims in point 7.1.4 of the Reasons:

“In order to ensure legal certainty and to protect legitimate interests of applicants, the abolition of this possibility by the interpretation of the new law given by the Enlarged Board in this decision shall therefore have no retroactive effect, and an appropriate time limit of three months after publication of the present decision in the Official Journal of the EPO is set in order for future applications to comply with this new situation.”

The problem is: what is the fi [...]

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