With its judgment of March 5, 2015 (I-2 U 16/14), the Higher Regional Court (HRC) Dusseldorf reversed the first-instance decision and has now come to same conclusion as did the High Court of Justice for England and Wales (here) by holding that pemetrexed dipotassium does not fall within the equivalent scope of protection of EP1 313 508 claiming pemetrexed disodium (in a combination formulation with vitamin B12 or a pharmaceutical derivative thereof). The facts of the case have been set out in the above-referenced blog by our colleagues at Bristows, to which we wish to refer.
In the above-mentioned High Court decision, a significant factor was the prosecution history. Justice Arnold summari [...]
On 24 March, 2015, the Enlarged Board of Appeal of the EPO, the final judicial arbiter of the interpretation of the European Patent Convention, issued Decision G 3/14 addressing the question of when, and to what extent, clarity objections could be raised by a party challenging the validity of a patent through the EPO’s Opposition procedure. The Decision concludes that granted claims, including combinations of independent claims and their proper dependent claims, cannot be formally challenged for a lack of clarity. Rather, a formal objection of lack of clarity can only be made when the substance of a granted claim, dependent or independent, is changed by an amendment to that claim, and then [...]
The judgement “Schleifprodukt” rendered by the German Federal Court of Justice on 25 November 2014 could be seen as a step towards harmonisation with the EPO because the court carried out the test for the admissibility of claim amendments by assessing whether the feature combination of the amended claim in its entirety represents a technical teaching which is identifiable from the original application as being suitable for achieving the effects of the invention.
A first review of the EPO’s proposals for the EP-UE renewal fees in comparison to the current rates
by Thorsten Bausch and Greg Sach
The EPO, or more specifically the president of the EPO, has recently submitted proposals for the level of renewal fees for the future European Patent with Unitary Effect (EP-UE) to the working group responsible for establishing a fee structure for the EP-UE. This working group consists of the EPO, the 25 EU member states and a number of observers such as EPI, Business Europe, the European Commission and other EPO member states that are not members of the EU. The proposals are for discussion in a meeting scheduled for end of March; if there is no agreement by [...]
by Anja Petersen-Padberg
The Federal Court of Justice decided in the “Electric Kettle” case (25.06.2014, docket X ZR 72/13) that the placing of goods in transit proceedings does not infringe a patent right in Germany as the country of transit. The court stressed that it is of no relevance whether the goods were placed in so-called “T1″ external transit proceedings or in “T2″ transit proceedings where goods are declared to be released for free circulation on the market of the European Union and are forwarded without sealing. Patent infringement may only be assumed if the goods are subject to a sales transaction in the transit country or if the goods are imported for this purpose. This must be [...]
by Stephan Disser
The German Federal Court of Justice (FCJ) has just issued its written decision in the case “Repaglinid” (X ZR 128/09). As far as can be seen, the decision is not yet available on the FCJ’s website www.bundesgerichtshof.de. The FCJ rejected the patent proprietor’s appeal against the decision of the Federal Patent Court revoking the German part of EP 0 589 874 for lack of inventive step. The decision contains some interesting aspects regarding the assessment of inventive step by the FCJ in the pharma field and in general.
Claimed in the patent-in-suit is the use of an enantiomer (Repaglinide) as active substance in the preparation of a long-term antidiabetic agent charact [...]