Individualization – Where does it end?
Fairly recent case law of the EPO suggests that the concept of individualized disclosure may reach further than many people think. This can have severe implications for the validity of patents and patent applications, especially in the field of chemistry and life sciences. In the following these decisions and their potential consequences are analyzed and some recommendations are given.
The concept of individualization, i.e. singling out a specific embodiment from a generic disclosure, in various instances is a key concept of the EPO for assessing the “quality” of disclosures. It is applied in the examination of novelty of selection inventions. If the features of the claim characterize an [...]
Effects under Procedural Law if Patentee and Exclusive Licensee Claim Damages as “Essential Joint Litigants”
At the beginning of this year, the German Federal Court of Justice (“FCJ”) rendered in “Tintenpatrone II” (“Ink Cartridge II”) (Docket No. X ZR 94/10) a decision of interest concerning the relation of patentee and exclusive licensee with regard to the claim of damages, following it decisions “Ink Cartridge I” and “Cinch-Plug”.
Plaintiff (1) is the owner of a utility model concerning an ink cartridge. Plaintiff (2) is his exclusive licensee in Germany. Subsequent to court decisions confirming infringement and (laborious) proceedings to obtain information and rendering of accounts, plaintiffs claimed in new proceedings the payment of damages according to the calculation me [...]
Who’s the skilled sausage-maker? It’s a team, decrees Germany’s Federal Court of Justice
As in other jurisdictions, German Courts try to determine whether an invention is patentable over the prior art by looking at it through the eyes of the notional skilled person at the effective filing date of the patent at issue. In a decision pronounced on March 6, 2012 (docket X ZR 78/09), the German Federal Court of Justice (Bundesgerichtshof) refined its case law on the definition of the skilled person, this time on a case to do with sausage making.
The case concerned a process for manufacturing meat products such as sausages, by stuffing a certain type of tubular casing which is delivered to the stuffing plant on a roll. The casing is called reel stock.
The use of reel stock in the prio [...]
The anonymous character of third party observations in ex parte and inter partes appeal proceedings
The EPO Boards of Appeal distinguish between the anonymous character of third party observations in ex parte and inter partes appeal proceedings.
Troublesome Times for the Enforcement of IPR at German Trade-fairs?
An article in the well-known IP magazine GRUR last year carried the heading “Do exhibitors at trade fairs in Germany enjoy immunity from the courts?” The author came to the conclusion that this question had to be answered in the affirmative after he had read the Federal Court of Justice decision “Pralinenform II” (a trademark case decided on 22 April 2010, docket I ZR 17/05) and the decision of the Regional Court Mannheim “Sauggreifer” (a patent case of 29 October 2010, docket 7 O 214/10).
In “Pralinenform II”, the Federal Court of Justice decided that a Turkish company had exhibited and therefore “advertised” at the International Sweets and Biscuits Fair in Cologne swee [...]
Oxycodone – An Unfinished Battle and an Undisclosed Question
Litigation and EPO Oppositions/Appeals surrounding a controlled-release dosage form of the drug oxycodone, a morphine-like opioid analgesic developed in 1918, has kept Europe’s Pharma IP Lawyers busy for a couple of years. One of the key EP patents in this battle has been EP 722 730, and almost everything about this patent is out of the ordinary. The patent is owned by no less than 13 separate companies from the Purdue Pharma/Napp/Mundipharma group. It is the first divisional application of EP 576 643 and itself forms the parent application of no less than 13 further divisionals and grand-divisionals, according to epoline. It is distinguished from its parent application by a disclaimer which [...]
