The FCJ decided in the recently published decision “Wundverband” [Wound Dressing] “Moelnlycke Health Care v. BSN Medical” (docket X ZR 70/12) on 19 February 2013 that an exclusive licensee is (in part) a legal successor of the patentee. As a consequence, as long as patentee’s claims (including such claims concerning the time-span after grant of an exclusive license) are pending at another German court, the exclusive licensee has no right to sue with regard to the same subject matter due to the force of res judicata of the judgement against the legal successor and the lis pendens rule.

Facts

The FCJ decision is concerned with a domestic case focussed on German civil procedural law, [...]

The Federal Court of Justice in Germany held in its recent judgment of January 22, 2013 (court docket: X ZR 70/11) that to claim co-inventorship the contribution of the co-inventor need only be found in parts of the description of the patent and does not have to be found in the claims. The Court stated that an invention manifests itself throughout the entire patent specification which includes the claims, the description with examples, and the figures. Therefore, if a co-inventor’s contribution is included in the description this is sufficient to establish co-inventorship. The claims of the patent only have a limiting function as they exclude embodiments in constellations where embodiments [...]

In its “Leflunomid” decision of 24 July 2012 (Case X ZR 126/09), the FCJ declared a patent claim to be invalid which covered a combination of leflunomide and teriflunomide, on the grounds that it had long been known in the prior art (for 100 years) that some leflunomide spontaneously and unavoidably converts teriflunomide over time (by a ring opening process). The combination was therefore obvious to the expert. The decision will be published in the Kluwer IP case databank.

The plaintiff in the case at issue was a generic company which had launched what it thought was a patent-free mono-product containing just leflunomide. However, due to the conversion of some leflunomide into terifl [...]

The Regional Court Dusseldorf submitted on 21 March 2013 a referral to the CJEU with five questions regarding the interpretation of Art. 102 TFEU relating to the antitrust objection of compulsory license in patent infringement actions.

The patent infringement action at issue is concerned with a LTE-standard-essential patent. The plaintiff declared its readiness via the LTE-standardization organization to grant licenses to third parties under fair, reasonable and non-discriminatory conditions (FRAND declaration). It is not in dispute between the parties that the defendant’s products make use of the LTE standard and are therefore patent infringing.

The plaintiff had namely offered the defend [...]

Article 123(3) EPC stipulates that a European patent may not be amended in such a way as to extend the protection it confers. A special case of extension of the protective scope may occur in claims which define both the type of and the amount of a specific component. An issue addressed in a series of recent decisions of the Boards of Appeal of the EPO is whether and under which conditions such a claim violates Article 123(3) EPC if after grant of the patent the type of the component is restricted to preferred embodiments. The conclusions reached in the earlier decisions differ greatly, ranging from a clear yes, irrespective of the wording chosen for the claim restriction (see e.g. T2017/07), [...]

The Supreme Court held that claiming priority of an earlier application requires a direct and unambiguous disclosure in the priority document of all features of the technical teaching as defined in the claims. If the claimed invention is characterized by a particular property of one of its components that has not (clearly) been disclosed in the priority document, and that permits a person of ordinary skill to make a deliberate selection out of a range of different embodiments (here: insensitivity to UV light), the priority document lacks a clear and unambiguous disclosure of the invention.

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